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 the 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 a particularly observant one, either because of his or her personal experience or his or her extensive knowledge of the sector in question.

Procedures

What enforcement procedures are available?

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 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. This activity aims 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?

Notwithstanding the Court of Justice of the European Union (CJEU) Cofemel decision, which essentially seems to rule out that, for copyright protection to arise in a work under Directive 2001/29, what is required is just its sufficient originality and no other conditions can be imposed – we had in Italy, until the end of 2021, a series of decisions that seem to ignore the principles provided in the Cofemel decision even if, in some cases, the parties expressly mentioned the same. In this sense, among others, we can mention Tribunale Milano of 25 January 2021 on the case Moon Boot and Tribunale Milano of 13 December 2021 on the case La Pliage.

Other interesting cases that recall the well-known decision of the CJEU are:

  • Tribunale Venezia of 5 July  2021 on the case AM Srl against New Murano (chandeliers), which excludes the copyright protection for the Disc Ring since it has not a peculiar expressive shape, neither reflects any individual personality;
  • Tribunale Milano of 5 July 2021 on the case Molo Design Ltd against Chanel Srl (flexible and expandable furnishing elements), which ruled that, taking in consideration the requirement of the originality as indicated by the CJEU, the artistic value may be intended as a shape of high originality; and
  • Tribunale Roma of 29 July 2021 on the case Jaguar Land Rober against Ineos (automobiles), concludes that the industrial design products of high quality are art works and are subject to Italian copyright law and, so, to the requirements of creative character and artistic value.