1. NEW TRANDS FOR PROTECTION OF DESIGN IN THE EU NEW TRENDS FOR THE PROTECTION OF DESIGNS IN THE EUROPEAN UNION Dr. Simone BONGIOVANNI bongiovanni@studiotorta.it

2. 2009 © Studio Torta 1 Sources of protection: a) Protection conferred by Community Design b) Protection conferred by three-dimensional Community Trademark c) Protection conferred by Copyright

3. 2009 © Studio Torta 2 Protection conferred by Community Design Industrial design protection is available in the EU for new designs having individual character. 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). Protection may be obtained by filing at the Office (registered design) or by the disclosure of the design in the EU (unregistered design).

4. 2009 © Studio Torta 3 Protection conferred by three- dimensional (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. 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.

5. 2009 © Studio Torta 4 Protection conferred by three- dimensional (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. 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. 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.

6. 2009 © Studio Torta 5 Protection conferred by Community Design Case Law

7. 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. 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. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration. 2009 © Studio Torta 6

8. Protection conferred by Community Design Since 2003 Fiat has been selling the “Nuova Panda” – a restyled version of the well- known “Panda” car which has been marketed with great success since the early eighties Since 2003 Fiat has been selling the “Nuova Panda” – a restyled version of the well- known “Panda” car which has been marketed with great success since the early eighties 2009 © Studio Torta 7

9. Protection conferred by Community Design Fiat filed an Italian Design in year 2002 which has been extended as 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. This design has also been filed in a number of non EU-countries, for instance, China. 2009 © Studio Torta 8

10. Protection conferred by Community Design 2009 © Studio Torta 9 “Nuova Panda” car

11. Protection conferred by Community Design 2009 © Studio Torta 10 “Nuova Panda” car

12. Protection conferred by Community Design 2009 © Studio Torta 11 “Nuova Panda” car

13. 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) 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 12

14. Protection conferred by Community Design 2009 © Studio Torta 13 “Peri” car

15. Protection conferred by Community Design 2009 © Studio Torta 14 “Peri” car

16. Protection conferred by Community Design 2009 © Studio Torta 15 “Peri” car

17. 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. 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. 2009 © Studio Torta 16

18. 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. 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. 2009 © Studio Torta 17

19. 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: 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: 2009 © Studio Torta 18 In the perception of an informed user the general impression of the “Peri” car would not differ from the design filed by Fiat.

20. Protection conferred by Community Design 2009 © Studio Torta 19 “Peri” car “Nuova Panda” car

21. Protection conferred by Community Design 2009 © Studio Torta 20 “Peri” car “Nuova Panda” car

22. Protection conferred by Community Design 2009 © Studio Torta 21 Superimposed image

23. 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. 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. 2009 © Studio Torta 22

24. 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 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 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. The Court also acknowledged that some views (for instance side view) were almost identical. 2009 © Studio Torta 23

25. 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. 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. 2009 © Studio Torta 24

26. 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. 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. The Court therefore rejected Fiat’s claim and condemned Fiat to pay legal costs. 2009 © Studio Torta 25

27. 2009 © Studio Torta 26 Protection conferred by three-dimensional Community Trademark Case Law

28. 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. Daimler Chrysler AG owns an International Design registration and a three-dimensional Community Trademark for the “Smart” car. 2009 © Studio Torta 27

29. Protection conferred by three-dimensional Community Trademark 2009 © Studio Torta 28

30. Protection conferred by three-dimensional Community Trademark Daimler Chrysler AG claimed that Nord- Auto and O.M.C.I. infringed its Trademark and Design rights by distributing the Chinese “Buble” city car in Europe. Daimler Chrysler AG claimed that Nord- Auto and O.M.C.I. infringed its Trademark and Design rights by distributing the Chinese “Buble” city car in Europe. 2009 © Studio Torta 29

31. Protection conferred by three-dimensional Community Trademark Daimler Chrysler AG acted on three different grounds. Daimler Chrysler AG acted on three different grounds. Design infringement Design infringement Trademark infringement Trademark infringement Unfair competition (the car, very cheap, was presented as the “Chinese” Smart on several specialized magazines.) Unfair competition (the car, very cheap, was presented as the “Chinese” Smart on several specialized magazines.) 2009 © Studio Torta 30

32. Protection conferred by three-dimensional Community Trademark 2009 © Studio Torta 31 “Buble” car “Smart” car

33. 2009 © Studio Torta 32 Protection conferred by three-dimensional Community Trademark “Buble” car “Smart” car

34. 2009 © Studio Torta 33 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). 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).

35. 2009 © Studio Torta 34 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.

36. 2009 © Studio Torta 35 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. 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. 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. Moreover, only the two-tone effect was found to be valid because of the disclosure of the design but without the two-tone effect. Protection conferred by three-dimensional Community Trademark

37. 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. 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. 2009 © Studio Torta 36

38. 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”. 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”. 2009 © Studio Torta 37

39. 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 three- dimensional 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. In greater detail, the Court ruled that the shape of the Chinese car was very similar to the shape represented in Daimler’s three- dimensional 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. 2009 © Studio Torta 38

40. 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). 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. Due to the “Special” shape and the commercial success, the public immediately links the shape with the producer. 2009 © Studio Torta 39

41. Protection conferred by three-dimensional Community Trademark So both Design and Trademark protection applied. So both Design and Trademark protection applied. 2009 © Studio Torta 40

42. 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 41

43. 2009 © Studio Torta 42 Protection conferred by Copyright Case Law

44. Protection conferred by Copyright 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. 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 43 “Panton” chair

45. Protection conferred by Copyright Verner Panton is considered one of Denmark's most influential 20th- century 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. 2009 © Studio Torta 44

46. 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. The Court held that the "Panton" chair had to be considered as a very famous product that was also exposed in museums and exhibitions. 2009 © Studio Torta 45

47. Protection conferred by Copyright 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. 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. 2009 © Studio Torta 46 “Loft” chair

48. Protection conferred by Copyright The claimant requested the Court to grant a preliminary injunction and to order the seizure of the infringement goods. The claimant requested the Court to grant a preliminary injunction and to order the seizure of the infringement goods. 2009 © Studio Torta 47

49. 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). 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 48

50. 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. 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 49

51. Protection conferred by Copyright Key issue: Key issue: copyright protection is available only in limited cases, however in this selected cases protection is rather broad. 2009 © Studio Torta 50

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