A recent judgment on 16 June 2015 (no. 7432/2015), saw the Court of Milan ascertain the difference between a shape trademark and an artistic shape classified as industrial design protected under copyright law.
The dispute concerned the use and the reproduction of the design of the renowned ‘Nathalie’ bed (the Design), which was created in the ‘70s by Italian designer and architect Vico Magistretti. Mr. Magistretti (and later his heirs) granted an exclusive licence of the Design to the plaintiff.
The plaintiff, Flou S.p.a” (Flou), claimed the company Mondo Convenienza Holding s.p.a and several companies of its group (Mondo Convenienza) were illegitimately selling reproductions of the Design.
Flou sought to be indemnified for the infringement of copyright as well as for the counterfeiting of the Design as a shape trademark.
Mondo Convenienza refused to recognize any of the alleged claims on the basis of the following assumptions:
- an industrial design – which has not been registered – could not be protected by copyright law
- the designed shape of a bed has an aesthetic-functional purpose only and consequently cannot have also a distinctive purpose protected by trademark law.
According to the ruling of the Court of Milan, designs are worthy of protection under Italian Copyright Law (IC Law) if they have artistic and creative qualities, the existence of which have to be assessed on the basis of the following:
- experts’ perception in the relevant professional field
- consumers’ perception of the artistic shape
- design’s particular rewards
- originality of the design
- innovative contribution of the design with regard to the period of creation.
In light of the above, as well as taking into consideration the “Flos SpA vs. Semeraro Casa e Famiglia SpA” sentence of the European Court of Justice, the Italian judges recognised the original and creative nature of the Design and deemed it worthy to be protected under the IC Law, regardless of the fact that it is not registered.
As per the protection claimed for the Design under trademark law, the Court refused it as pursuant to European and Italian intellectual property laws and regulations, the shape cannot be registered as a trademark if it:
- results from the nature of the goods themselves
- is necessary to obtain a technical result
- gives substantial value to the goods.
Finally the Court recognized Flou an indemnification amounting approximately to €2.5 million, including damages to the company’s image, decrease of the Design’s value, and legal fees, which represents an almost unprecedented request in similar rulings. Not bad for a bed!