Enforcement

Grounds for a claim

What are the key causes of action?

Usually, the design owner can start an infringement action due to the use of its design rights by a third party, provided that the designs present the necessary protection requirements (ie, novelty and individual character). In case of an unregistered design, use must result from copying. Such use includes the following making, offering for sale and putting on the market, importing and exporting, with the exclusion of goods for repair purposes.

Before bringing an infringement action to court, the rights holder should verify whether the alleged infringing product produces “on the informed user a different overall impression” (known as the ‘infringement test’).

The legislation in force provides no definition for the term ‘informed user’. According to case law, the concept of the informed user “must be understood as lying somewhere between that of the average consumer, applicable in trademark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trademarks in conflict, and the sector’s expert, who is an expert with detailed technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question.”

Procedures

What enforcement procedures are available?

In order to quickly resolve the matter, it is possible to claim provisional remedies such as injunctions, seizures and descriptions.

An injunction is an order for the infringer to cease placing on the market and advertising the contested goods, often obliging the infringer to withdraw already distributed infringed goods and advertising materials from the market.

The seizure will involve the confiscation of goods and advertising materials, which constitute the infringement.

The description is a descriptive activity of the goods or the trade activity of the infringer, as well as accounting documents aimed at acquiring evidence of infringement. The aim of this activity is to collect proofs that can be used in later phases of the judgment.

Remedies

What remedies are available?

For claiming these provisional remedies there would be the real and concrete risk that in waiting for the final court decision the complainant will suffer serious and irreparable damages that will be difficult to compensate later (periculum in mora) other than the possibility or presumption, at the time of the request, that the complainant is the actual holder of the design (fumus boni iuri). The preliminary injunction proceedings may be decided in two months (average time frame) and they can be a powerful tool to shorten the solution of an act of infringement. The issuance of a provisional remedy often enables the parties to reach a settlement agreement in which the infringer normally recognises the validity of the complainant’s rights.

In the lack of the requirements to claim the preliminary remedies, an ordinary proceeding against the infringement can be started before the ordinary court. There are 22 specialised courts across Italy whose competence can be based on the residence or domicile of the plaintiff or defendant or where the infringement took place.

The remedies available are:

  • damages, compensation and/or account of profits;
  • order for search, seizure or destruction;
  • order to withdraw from the market;
  • publication of the judgment; and
  • reimbursement of litigation costs, eventual criminal charges.
Enforcement time frame

What are the time frames for the resolution of enforcement actions for registered and unregistered rights?

The duration of an ordinary action is around three years (average time frame).

Recent cases

What key cases from the past 18 months should rights holders be aware of?

Design owners should look to the European Court of Justice (ECJ) decision in Cofemel v G-Star Raw (C-683717) dated 12 September 2019, which may have a strong affect even on the Italian design (and even copyright) system. The ECJ dealt with the long outstanding issue on the relationship between copyrights and the rights arising from design protection. The ECJ stated that the works of applied arts, industrial designs and design works can be copyrighted if two cumulative conditions exist. The object must be:

  • original in the sense of the author’s own intellectual creation; and
  • identifiable with sufficient precision and objectivity.

These conclusions may have an impact on the Italian system. According to the Italian legal framework, a design may be protected by copyright if the same enjoys “artistic value”. This latter element is evaluated by the Italian courts not only through the purely subjective perception of the design but also by consideration of the approvals obtained by the work itself from industry experts.  Essentially, the artistic value depends on various factors, among which are:

  • recognition by relevant institutions;
  • participation in fairs and exhibitions;
  • publication in specialised magazines; and
  • awards recognition.