At the end of February the Milan IP Court rendered an interesting order on the protection of unregistered design protection with respect to fabric design.
The law suit was commenced by an historic Italian cotton mill specialized in the production of high-end shirt fabrics and it was brought against another Italian competitor accused of infringing 54 original fabric prototypes created by the plaintiff.
The Court found that plaintiff’s unregistered designs were indeed granted protection under EC Regulation no. 6/2002 while on the other hand the defendant had not provided sufficient evidence of lack of novelty and individual character of the designs in question.
It is useful to recall that an Unregistered Community Design (UCD) is granted a per se protection if the design is Novel and if it possesses an individual character. For a UCD to be Novel, it must differ from prior designs by more than immaterial details. For a UCD to possess individual character, it must produce a different overall impression on the informed user from prior designs. In many cases, the informed user is likely to be the end user of the product. In fields where the designer has less design freedom, the difference between protectable designs and prior designs will not be as great as where the designer had complete design freedom. This is also reflected in the infringement rights arising from the UCD.
In addition, the Court also decided that the defendant’s conduct also infringed the Italian unfair competition rules under the Italian Civil Code as the copy of the models resulted in the misappropriation of the claimant’s research and development investments in order to enter the market at a reduced cost.