Hold your horses: overall impression governs evaluation of design infringement
A recent decision of the Court of Perugia addressed the criteria for evaluating infringement of a registered design. The judgment confirms the alignment of Italian design law with the consolidated Community design approach.
Tendon boots for horses
On March 27 2014 the Court of Perugia issued a decision in an appeal concerning a request for an interlocutory injunction that was denied. Veredus had sought injunctive relief against R-EN-G Equipment and Umbria Equitazione based on the alleged infringement of Registered Community Design 00053131-0001-2 (RCD-131), owned by Veredus.
RCD-131 relates to a design for tendon boots for horses. The tendon boots described in RCD-131 include a combination of three elements: a protection plate, flexible strips and the end of each flexible strip.
In denying injunctive relief, the court declared that RCD-131 was not infringed by the defendant's products because none of the individual three elements found in RCD-131 were present. However, such decisions are subject to reconsideration on appeal before a three-judge panel of the same court.
Requesting reconsideration, Veredus argued that the first decision was erroneously based on an analysis of the three elements with each element considered in isolation, rather than an analysis of the design as a whole, taking into account the overall impression produced on an informed user “at first sight”.
The court accepted Veredus’s request for reconsideration and granted the injunction.
Basing its decision on Article 41 of the Industrial Property Code, the court stated that a product does not infringe a registered design when the product, evaluated on the basis of its overall impression, has real and significant autonomy with respect to the elements of the registered design that can confer 'individual character' on the registered design itself (in the case at hand, the three elements of RCD-131).
The court also affirmed that Article 41 of the Industrial Property Code requires that the comparison between a product and a registered design be based on the overall impression of a set of features, rather than on an individual analysis of each separate element.
Here the court agreed with Veredus; it did not examine each of the three elements independently from the other two, but rather based its decision on an overall analysis of the three elements as a whole.
The court stated that at first sight, the product as illustrated in RCD-131 and the defendant’s product produced the same overall impression on the informed user and differed only with respect to secondary and irrelevant details.
Therefore, the court reversed its initial decision and declared that the defendant's products infringed RCD-131.
According to Article 31 of the Industrial Property Code and Article 3 of the EU Community Designs Regulation (6/2002), the object of a design registration can refer to the lines, contours, colours, shape, texture and/or materials of a product and/or its ornamentation, to the extent that it is new and has a distinctive individual character with respect to the available prior art.
There is no reason to exclude protective items for horses, such as tendon boots, from this definition.
The Articles 31 to 33, 33bis and 34 of the Industrial Property Code and Articles 4 to 7 and 9 of the Community Designs Regulation provide that a design shall be considered to:
- be new if no identical design has been made available to the public before the filing date or the priority date of the design application, and if its features differ from a prior art design only in regard to small details; and
- have individual character if the overall impression that it produces on the informed user differs from the overall impression produced on such user by any design available to the public before the filing date or the priority date of the design application. In assessing individual character, the degree of freedom of the designer in developing the design shall be considered.
As for the scope of protection of a design registration, Article 41 of the Industrial Property Code and Article 10 of the Community Designs Regulation establish that the scope of protection shall extend to any design which does not produce a different overall impression on the informed user.
Similarly, Italian case law on unfair competition (Article 2598 of the Civil Code) maintains that the comparison between competitors’ products should be performed by analysing the elements of such products as a whole rather than undertaking a specific and separate analysis of each element (eg, see Court of Cassation, Decision 29775/2008).
The initial court decision was contrary to existing and consolidated Italian and EU law and practice relating to designs. By reversing the first verdict, the appeal court confirmed that an Italian or Community registered design is infringed when a product produces on the informed user the same overall impression as the product as illustrated in the registered design. A separate analysis of each element making up the product is not the appropriate standard for determining infringement.
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