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Registered design and competing products: when can one speak of counterfeiting?

Published in: Intellectual Property
by Marina Notarnicola
Home > Registered design and competing products: when can one speak of counterfeiting?

The Italian Supreme Court, in its Order No. 20234 of 23/06/2022, sought to clarify an important legal principle, namely, the scope of effective protection of registered designs.

The case dealt with by the Italian Supreme Court

The case examined by the Italian Supreme Court concerns the alleged counterfeiting of a multiple registered design, comprising six designs of tablets and toilet seat covers, equipped with a transparent structure with various types of objects (pasta, spikes, shells, letters, candies and splinters) inserted inside.

Called upon to make the comparison, the Court of Appeal had found that: “there is for both a transparent structure with the insertion of various types of objects” but “the characteristic elements […] are different, in that those peculiar to the model are the shape of the seat, the incorporation of decorative objects visible in transparency and of only one type, the diffuse and regular distribution also in the lid; on the other hand, the objects marketed by the opposing party are indeed transparent, but have completely different decorative elements and are inserted only in the seat and not in the lid“. The territorial court had therefore ruled out infringement because the competing products created a different overall impression from the registered designs.

The Court of Cassation, in accordance with an already established approach, agreed with what the Court of Appeal had ruled and took the opportunity to illustrate an important legal principle. Let’s now examine what the law says and what is the logical-interpretative procedure adopted by the Supreme Court.

What are the legitimate rights of the owner of a registered design?

Whoever registers an ornamental design obtains the exclusive right to enjoy and dispose of that intellectual property. So much so that Art. 41(1) of the Italian Industrial Property Code provides that “Registration of a design confers on the holder the exclusive right to use it and to prohibit third parties from using it without his consent“.

This provision is located in Chapter II (Rules concerning the existence, scope and exercise of industrial property rights), Section III (Designs). However, the registration of designs, as provided for in comma 3, provides additional protection: the rights conferred by the registered design are extended to any product that “does not produce in the informed user a different overall impression“.

With regard to registered designs, the verification as to the legitimacy of the competing product must therefore be conducted by assessing whether or not the new design arouses in the so-called informed user the same general impression as the previous one, based on the combination of the aesthetic characteristics, taking into account the product sector that is more or less crowded with similar products.

When can one speak of counterfeiting?

By applying the rules and principles mentioned above, the Italian Supreme Court came to the conclusion that no counterfeiting occurred, upholding the judgement of the Court of Appeal regarding the different impression of the products in comparison with the registered design. The Italian Supreme Court made it clear that the object of registration is exclusively a shape, not an idea or concept.

Counterfeiting exists only in the case of formal copying of the registered design.

The scope of protection of a registered design is limited exclusively to what has been concretely registered and is thereby restricted to the “new aesthetic and ornamental line conferred on a given industrial product“.

The Supreme Court’s principle therefore excludes conceptual abstractions.

What is the scope of protection of a registered design?

To assess the scope of protection conferred by a registered design, the Supreme Court ruled that “priority should be given to the textual data resulting from what has been object of registration, in respect of which it is not possible to speak of a sort of archetype, susceptible to factual proliferation attributable to it“. Hence, “the object of protection is not the shape in itself, abstractly considered as an artistic expression, but rather the shape inseparable from the industrial product which it distinguishes as the bearer of an aesthetic function from which derives a specific market value of the good“.

In justifying the aforementioned assumption, the Italian Supreme Court specified that the protection of design products, unlike inventions, is dependent on the registration of that specific aesthetic shape that is actually protected through the filing.

It would therefore not be permitted to apply the same logic, in terms of abstraction and interference, as in the field of inventions and so-called strong ideas.

The Canella Camaiora Law Firm’s legal services dedicated to this specific topic belong to the area of intellectual property. The firm provides high-profile legal assistance in the field of design registration and protection against acts of counterfeiting and unfair competition.

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Publication date: 3 October 2022
Last update: 7 September 2023
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