On 24 December 2015 the Court of Milan, Business Chamber “A”, issued an interim order granting the preliminary appeal by Full Spot S.p.A., the company commercialising the well-known “O bags”. The order found that some bags by the company Ju’sto S.r.l. infringed the “O bags” registered design, and that the commercialisation of such bags amounted to unfair competition against Full Spot.
The Panel (judges Mrs Tavassi, Mr Marangoni and Mr Perrotti) compared the registered design relating to the “O bag” named “O chic” with the subsequent bag named “J-High” by Ju’sto.
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The Judges firstly affirmed the validity of the design of the “O chic” for the presence of the legal requirements, alias novelty and individual character. The same also found that the only exception made by the defendant in that respect was that the design of the “O chic” would have been fraudulently registered against its designer, a former collaborator of Full Spot who later worked with Ju’sto. The Panel rejected that exception deeming it unproven, noting that, in any case, the design was made as part of the designer’s collaboration with Full Spot, hence the rights belonged to the latter in line with the provisions of the law on the results of the employee’s work: “By analogy it is believed, by the prevailing academic opinions and case-law, that even in the field of contracts with self-employed persons there is a general principle based on which the employer acquires the copyright on the works created by the contractor, where the latter undertakes to carry out a creative activity so that his employer can then economically exploit the relevant results.”
Moving on to the assessment of design infringement, the Judges concluded that there was infringement, considering that the “J-High” produces the same “overall impression” as the “O chic” design on an informed user: “the details mentioned by the defendant and the differences of those components compared to the corresponding elements of the Full Spot bag, in fact, are visible only in close comparison, whereas the informed consumer makes its purchases based on a distant comparison according tothe overview of the product that he keeps in mind. Moreover, the differences at issue (blunt bag with greater emphasis, section of the handles flattened at the point of engagement and external visibility of the inner bag) may well be seen as variants of the Full Spot line, which is already known in the market.”
In addition, the Judges noted that the design infringement was “part of a wider context, as the Ju’sto bags reproduce all of the (registered and unregistered) designs of the “O bag” line by Full Spot“. So, it was considered unfair competition for slavish imitation under art. 2598 (1)( 1) Civil Code the reproduction, by the Ju’sto bags, of arbitrary and individualised elements of the “O bags”, such as: “a) a monochrome body in EVA material having a “plastic” visual effect and many different colours; b) interchangeable handles in different materials and colours, with a screw fastening system; c) interchangeable canvas inner bags in one colour or with patterns of different colours.”
Finally, the Judges found that Ju’sto also committed unfair competition for unfair business practices under art. 2598(1)(3) Civil Code: “there is no doubt that in reproducing the line of the three models of Full Spot in similar models which are conceptually very similar, as well as imitating the Full Spot production chronologically, the defendant proved to want to enter the market taking advantage of the creation, design studies and implementation methods of Full Spot. This gave the defendant the obvious advantage of not having to carry out an independent activity of creation and design with the relevant costs and timing, and of exploiting what had already been done by Full Spot, thereby achieving a saving which unduly favoured the defendant’s penetration of the market.”
The Judges instead rejected Full Stop’s claims that Ju’sto had unlawfully imitated the layout of the claimant’s stores and had unlawfully solicited its employees: in the first case they considered that the layout in question was not specifically protectable as it was similar to that adopted generally by handbag stores; in the second case they considered that the unlawful solicitation had not been proven.
In conclusion, the Court: i) inhibited Ju’sto from manufacturing, marketing and advertising bags infringing the “O chic” registered design or however constituting slavish imitation of the “O bags” (in particular the J-Tiny, J-Wide and J-High bags by Ju’sto), with the establishment of a penalty of € 100.00 for each additional bag sold and of € 1,000.00 for each day of delay in complying with the order; ii) ordered the withdrawal from the market of these bags; iii) authorised the seizure of all these bags; iv) ordered the publication of the order on the Corriere della Sera newspaper, the Vanity Fair magazine and on the website www.justo-store.it; v) ordered Ju’sto to pay legal fees of € 13,000.
It is to be pointed out, however, that this is an interim decision that might be overturned at the end of the merits proceedings that should now be commenced by the parties.