Recently, on the 8th November 2012, The Tribunal of the Entrepreneurs of Venice, in the case Bialetti / De Longhi in the matter of registered community design, had declared an important principle of law:
the registered community design does not protect the idea (or the conceptual solution of the transposition of the form caffettiera from the flame to the espresso machines) but the expression in the aesthetic form which emerges from the registered design; it highlighted that, if the judgment of confusion comes from a synthetic valuation, it does not mean the single elements do not have to find adequate consideration when these single elements in their combination are able to give an overall impression
The Tribunal of the Entrepreneurs of Venice, once it has being admitted and acknowledged the novelty and the individual character of the registered design Bialetti ‘Mokona’, it has then decided to examine in detail the two products, analysing the differences.
By this comparative exam, some important elements emerged, such as to lead the Judge to conclude for a substantial diversity in the style and in the form of Moka Aroma De Longhi, at the point to tend to exclude the interference in the products and the unfair competition.
The Tribunal of the Entrepreneurs asserts the mere sum of the interference of the single elements between the two products is less than 50%. The informed user is able to recognise the difference of the characteristic cuttings of the Bialetti shape, opposed to the smooth surface of the Moka Aroma De Longhi.
It is therefore the aesthetic form which finds protection in the registered design.
The O.A.M.I. (Office for the Harmonisation of the Internal Market) defines the Registered Community Design (RCD) as:
An exclusive right for the outward appearance of a product or part of it, resulting from the features (in particular, the lines, contours, colors, shape, texture and/or materials) of the product itself and/or its ornamentation.
The “function” is protected by patent, which “overalls the operation or construction of an invention. To be patentable, a function must be innovative, have an industrial application and be described in such a fashion to permit reproduction of the process”.
Again the design and the industrial patents distinguish themselves by the trademark which “identifies the origin of goods and services of one undertaking to differentiate them from those of its competitors”.
The Patent County Court recently, on the 20th July 2012, in a case brought to his attention, has leaded the same methodological analysis adopted by the Tribunal of the Entrepreneurs of Venice, though it has reached, in the case in issue, a different conclusion.
The Patent County Court called to declare itself upon the registered design ICE BAG in conflict to CHILL BAG and other ice bucket bags, has examined in the details the following aspects:
- Identify the product
- Identify the informed user
- Design freedom
- Overall impression of the design
- Validity: a) Function, b) Novelty, c) Individual character
- Infringement
The English Court has pronounced itself in favour of the registered design ICE BAG, as this is “a product that is being marketed as something specifically designed to keep bottles on ice”.
On the detailed examination of ICE BAG and CHILL BAG, the English Judge acknowledges that the difference between the two products are the height and the width and “the overall impression on an informed user of bottle chillers created by Transline is different from that produced by the Ice Bag design”.
Nevertheless, “the scope of protection is relatively narrow and, in the opinion of the Judge, the Ice Bag design has individual character and is valid”.
The two bags, essentially, are different just for the presence of a business card slot and a coaster slot in the base.
According to the impression of the English Judge, these two differences are not enough to be appreciated by the informed user and, therefore, the Judge admits the violation of the registered design ICE BAG, though it has been acknowledged the scope of protection is relatively narrow.
Decisive, in both sentences, the English and the Italian, it has being the analysis upon the differences between the two products: in the Italian case the comparative examination between the two espresso machines has lead to avoid the interference, and instead, in the instant case examined by the English Court, the dissimilarities were not so great as to lead to a different overall impression.
From both sentences, then, it is clear the registered design is not protected by the idea itself but for its expression.
Venice, 21st January 2013
Avv. Lucia Loprieno
© IP Venice Intellectual Property
