Court of Milan, Decision of 3 March 2010, N. 2843/2009
In 2008, Fortune S.r.l. brought a design infringement action before the Court of Milan against Schneider Italia S.p.a. (Schneider) and the well-known retailer Conbipel S.p.a. Fortune claimed that the production and sale of a prism-shaped watch under the brand "NIAMA" [no pictures available] by Schneider and Conbipel infringed its exclusive rights in various Italian and Community designs protecting different shapes of its prism-shaped watch cases.
Click here to view the designs.
Fortune's Community designs
Fortune requested the court to order Schneider and Conbipel to cease sales, withdraw the allegedly infringing products and pay damages. Schneider and Conbipel replied that the design of their watches did not produce the same overall impression as Fortune's designs. In addition, they claimed that Fortune's designs were invalid for lack of novelty and individual character due to the existence of prior American designs relating to watches registered in the first half of the twentieth century. Furthermore, Conbipel objected that its supply agreement with Schneider contained a clause excluding its liability in case the sale of watches amounted to an IP infringement.
The Court of Milan held that Fortune's designs did not lack novelty and individual character.
Compared with the earlier American designs submitted by Schneider and Conbipel, the design of Fortune's watches was sufficiently different. Apart from that this evidence was not relevant as it concerned old American watches. The court said that for the examination of the individual character of a design the knowledge of the informed user in the relevant field must be taken into account. The court clarified that "the informed user was not a person skilled in the art who has a deep knowledge of prior designs including very early patent rights filed and only marketed outside the European Community". Therefore the informed user did not necessarily have knowledge about "designs filed in very old times" which have not been used in the relevant market.
Comparing Fortune's designs and the "NIAMA" watch, the court found that they looked very similar. It concluded that the production and sale of Schneider's and Conbipel's watches infringed Fortune's design rights.
With regard to the claim for damages, the court found only Schneider liable to compensate Fortune (in light of the clause in the supply agreement excluding Conbipel's liability). It awarded compensation on the basis of the disgorgement of Schneider's profits calculated by the difference between the sale price and the retail price of the infringing products. In addition, the court awarded equitable compensation for the "dilution" caused by the presence of the infringing watches on the market.