NEW
TRENDS
FOR
THE
NEW
TRANDS
FOR
PROTECTION
OF DESIGN
IN
PROTECTION
OF
THE
EU
DESIGNS IN THE
EUROPEAN UNION
Dr. Simone BONGIOVANNI
[email protected]
Sources of protection:
a) Protection conferred by Community
Design
b) Protection conferred by three-dimensional
Community Trademark
c) Protection conferred by Copyright
2009 © Studio Torta
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Protection conferred by
Community Design
Industrial design protection is available
in the EU for new designs having
individual character.
 Protection may be obtained by filing at
the Office (registered design) or by the
disclosure of the design in the EU
(unregistered design).

2009 © Studio Torta
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Protection conferred by threedimensional (3D) community trademark

A 3D trademark protection is available if
the product can be considered as a sign
which distinguishes the applicant's goods
from those of anyone in a similar
business.
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Protection conferred by threedimensional (3D) community
trademark
A new and very unusual or original shape
may be protected by Community Design
but is not automatically protected by
trademark too.
 In fact, it will not be registered as a CTM
if it does not comply with the condition of
being distinctive as regards the products
or services which have been applied for.

2009 © Studio Torta
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Protection conferred by
Community Design
Case Law
2009 © Studio Torta
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Protection conferred by Community Design
The scope of protection conferred by a
Community design shall include any design
which does not produce a different overall
impression on the informed user.
 In assessing the scope of protection, the
degree of freedom of the designer in
developing his design shall be taken into
consideration.

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Protection conferred by Community Design

Since 2003 Fiat has been selling the “Nuova
Panda” – a restyled version of the wellknown “Panda” car which has been
marketed with great success since the early
eighties
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Protection conferred by Community Design
Fiat filed an Italian Design in year 2002
which has been extended as Community
Design.
 This design has also been filed in a number
of non EU-countries, for instance, China.

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Protection conferred by Community Design
“Nuova Panda” car
2009 © Studio Torta
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Protection conferred by Community Design
“Nuova Panda” car
2009 © Studio Torta
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Protection conferred by Community Design
“Nuova Panda” car
2009 © Studio Torta
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Protection conferred by Community Design

Great Wall Motor Co. sells its “Peri” car in
China and in a number of extra China
countries. (Russia, Algeria, Egypt and
Syria)
2009 © Studio Torta
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Protection conferred by Community Design
“Peri” car
2009 © Studio Torta
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Protection conferred by Community Design
“Peri” car
2009 © Studio Torta
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Protection conferred by Community Design
“Peri” car
2009 © Studio Torta
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Protection conferred by Community Design

According to media
releases (internet
websites and interviews
by its managers) Great
Wall communicated its
intention to launch the
“Peri” car in the
European Union.
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Protection conferred by Community Design

Fiat showed the Court that Great Wall had
already selected its European distributors
and had started type test procedures on the
car according to European standards.
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Protection conferred by Community Design

Fiat sued Great Wall Motors Co. both in
Italy and in China claiming infringement of
its Community Design. The request was
based on the following:
In the perception of an informed
user the general impression of the
“Peri” car would not differ from
the design filed by Fiat.
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Protection conferred by Community Design
“Peri” car
“Nuova Panda” car
2009 © Studio Torta
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Protection conferred by Community Design
“Peri” car
“Nuova Panda” car
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Protection conferred by Community Design
Superimposed image
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Protection conferred by Community Design

The Court ruled that the individual
character of the design deriving from the
general lines and proportions of the single
volumes was almost entirely replicated in
the “Peri” car, irrespective of the specific
shape of some details. The “simple” lines of
the “Panda” car were reproduced.
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Protection conferred by Community Design



The main differences were found in the front grill,
in the lights and in some details of the sides;
however the above differences were not
considered sufficient to exclude infringement.
The Court noticed that the “Peri” car could be
considered a “Panda” with a different front grill.
The Court also acknowledged that some views
(for instance side view) were almost identical.
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Protection conferred by Community Design

The Court ruled that the general impression
of the “Peri” car did not differ from Fiat’s
and produced a “déjà vu” feeling in the
informed user. Consequently, the Court
granted Fiat’s claims.
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Protection conferred by Community Design
On the contrary the Chinese Court took an
opposite view. The Chinese Court held that
there were noticeable differences between
the Fiat’s design and the “Peri” car.
 The Court therefore rejected Fiat’s claim
and condemned Fiat to pay legal costs.

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Protection conferred by
three-dimensional
Community Trademark
Case Law
2009 © Studio Torta
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Protection conferred by three-dimensional
Community Trademark

Daimler Chrysler AG owns an International
Design registration and a three-dimensional
Community Trademark for the “Smart” car.
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Protection conferred by three-dimensional
Community Trademark
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Protection conferred by three-dimensional
Community Trademark

Daimler Chrysler AG claimed that NordAuto and O.M.C.I. infringed its Trademark
and Design rights by distributing the
Chinese “Buble” city car in Europe.
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Protection conferred by three-dimensional
Community Trademark



Daimler Chrysler AG acted on three
different grounds.
Design infringement
Trademark infringement
Unfair competition (the car, very cheap,
was presented as the “Chinese” Smart on
several specialized magazines.)
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Protection conferred by three-dimensional
Community Trademark
“Buble” car
“Smart” car
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Protection conferred by three-dimensional
Community Trademark
“Buble” car
“Smart” car
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Protection conferred by three-dimensional
Community Trademark

A previous urgent decision (inhibition) was
obtained in Germany where the court of
Frankfurt has inhibited (2007) the Chinese
producer to import the car and to make
advertisement of the car (the car had to be
presented at the Frankfurt car exhibition).
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Protection conferred by three-dimensional
Community Trademark
The defender claimed that:
 The design was not valid because of a
previous disclosure.
 The trademark was not valid as a car shape
cannot be registered.
 Unfair competition was not an issue as the
two cars had different technical features.
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Protection conferred by three-dimensional
Community Trademark

The Court held that the general impression of the
design of the “Smart” car and the general impression
of the design of the “Buble” car differed, as the
Chinese car did not have the same two-tone effect.

Consequently Design infringement was excluded.
Moreover, only the two-tone effect was found to be
valid because of the disclosure of the design but
without the two-tone effect.

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Protection conferred by three-dimensional
Community Trademark

However, according to the Court,
Trademarks and Designs had a different
scope of protection. In particular the scope
of Trademark protection is broader than the
scope of Design protection.
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Protection conferred by three-dimensional
Community Trademark

In addition the relevant public (i.e. the
“informed user”) is different: in the case of
Trademarks it is the “average consumer”
whereas in the case of Designs it is the
“informed consumer”.
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Protection conferred by three-dimensional
Community Trademark

In greater detail, the Court ruled that the
shape of the Chinese car was very similar to
the shape represented in Daimler’s threedimensional Community Trademark so that
there was a relevant risk of confusion. The
Court ruled that the Chinese “Buble” car
infringed Daimler’s three-dimensional
Community Trademark.
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Protection conferred by three-dimensional
Community Trademark
Moreover, Community Design was a valid
one as the shape of the car was not imposed
by the nature of the product (was not a
necessary one).
 Due to the “Special” shape and the
commercial success, the public immediately
links the shape with the producer.

2009 © Studio Torta
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Protection conferred by three-dimensional
Community Trademark

So both Design and Trademark protection
applied.
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Protection conferred by three-dimensional
Community Trademark
-
Measures granted by the Court
Seizure of all vehicles imported
Inhibition of any commercial activity
regarding the above vehicles
The Court imposed the payment of 10.000
euros for any violation of the order
Publication of the Court order on a number
of important magazines
2009 © Studio Torta
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Protection conferred by
Copyright
Case Law
2009 © Studio Torta
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Protection conferred by Copyright
“Panton” chair

An Italian company (Vitra)
summoned another Italian
company before the Court of
Milan, claiming that it was
the licensee of the Design of a
famous chair called “Panton”,
created by designer Verner
Panton in the 1960’s.
2009 © Studio Torta
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Protection conferred by Copyright
Verner Panton is considered one of
Denmark's most influential 20thcentury furniture and interior designers.
During his career, he created innovative
and futuristic designs in a variety of
materials, especially plastics, and in
vibrant colours. His style was very
"1960s" but regained popularity at the
end of the 20th century; as of 2004,
Panton's most well-known furniture
models are still in production.
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Protection conferred by Copyright

The Court held that the "Panton" chair
had to be considered as a very famous
product that was also exposed in
museums and exhibitions.
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Protection conferred by Copyright
“Loft” chair

The plaintiff claimed that the
defendant produced and sold a
number of chairs named
“Loft” that wholly resembled
the “Panton” chair, thus
infringing Vitra’s exclusive
rights in the design.
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Protection conferred by Copyright

The claimant requested the Court to
grant a preliminary injunction and to
order the seizure of the infringement
goods.
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Protection conferred by Copyright

In Italy protection by copyright for
individual design is available; however
the protection is not automatic as only
items having “artistic value” may
benefit from this longer protection (25
years from the death of the designer
instead of 25 years from the date of
filing of designs).
2009 © Studio Torta
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Protection conferred by Copyright

The Court came to the conclusion that
the "Panton" chair had an "artistic value"
and an "artistic character" and therefore
had to be protected under the Italian IP
Code. In light of this, the Court granted
the preliminary injunction and seizure
requested by the claimant.
2009 © Studio Torta
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Protection conferred by Copyright

Key issue:
copyright protection is available only in
limited cases, however in this selected
cases protection is rather broad.
2009 © Studio Torta
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NEW TRANDS FOR
PROTECTION
DESIGN IN
THANKOF
YOU!
THE EU
www.studiotorta.com