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THE INVALIDITY DIVISION OF THE EUIPO HAS HELD TWO COMMUNITY DESIGNS TO BE INVALID FOR INFRINGEMENT OF ART. 4, PARA. 2, REG. 6/2002

22/11/2016

With two decisions dated 9 and 16 November, the Office held in favour of a claim of invalidity of two Community designs for movement devices of footboards and couch heads to be inserted within armchairs and couches.


 

Claims of invalidity were brought against designs for movement devices of footboards and couch heads to be inserted within armchairs and couches:

testiera                        pediera

The two actions for invalidity were put forward on the central basis of the non-protection of the above mentioned devices as designs for infringement, among other provisions, of arts. 4 and 8 of Reg. 6/2002. In the petitions it was argued that the devices could not benefit from the protection granted to designs because i) they were components of a complex product destined to become invisible during the normal use of the complex product in which they had been incorporated; ii) the characteristics of the appearance of the devices were determine solely by their technical function.

The decisions start from an analysis of art. 4 of Reg. 6/2002, observing that the component of a complex product is protectable if it possesses the requisites of novelty and individual character and remains visible once it is placed in its final position within the complex product. The Office, noting on the one side that the device has to be present from the beginning within the product and recalling, on the other side, that the concept of accessory requires the possibility of applying it to the finished product in a second moment, properly qualified the devices at issue as “components of a complex product”.

Once it had been established that the Community designs concerned the component of a complex product, the attention of the Division turned on the analysis of the requisite of visibility of the component during normal use. On this point, the decisions recalls the settled case law which provides that the requisites under art. 4 of the Regulation should be satisfied when the entire component may be seen, for a given period of time in such a way that its all essential characteristics may be recognized.

The Office therefore held for the declaration of invalidity considering the total invisibility of the component during normal use of the product. The other motives of invalidity were not examined for reasons of procedural economy.

The two decisions represent an important arrival point for the re-affirmation of the categories of industrial property rights and of the scopes of protection which have to be recognized to them – especially in the hypothesis of when the titles are released by the Office without prior control of the existence of the requisites of validity imposed by the Regulation.

In a system without preventive examination, it is easy to assist to episodes of manipulation of “false” industrial property rights which must be strongly contrasted for the purpose of restoring the proper market dynamics.


ONE FAMOUS PERFUMED TREE. THE COURT OF MILAN IS CALLED TO DECIDE ON THE PROTECTION OF REGISTERED TRADEMARKS AND COMPETITION.

28/07/2016

The Court of Milan, with judgment published on May 11, 2016, found in favour of the action for invalidity of the trademark “Forest Fresh” as well as that of unfair competition advanced by Julius Samann Ltd and Tavola S.p.A., two companies each of which owns intellectual property rights and is exclusive licensee in Italy of the marks “JSL” which are represented by the particular stylized form of the conifer tree “Arbre Magique”. The actions were taken against the Polish company Siscar Spolka z o.o. Spolka Komandytowa which marketed products bearing the mark “Forest Fresh” thus infringing the above mentioned “JSL” marks.


 

The claimants sought to protect national, European and international marks constituted by the stylized form of the conifer tree, subsequently used for tree-shaped deodorants. In particular, the claimants argued that the international mark “Forest Fresh” owned by the Polish company Siscar Spólka z o.o. Spólka Komandytowa – a sign consisting of a stylized tree, at the centre of which the denominative element “Forest Fresh” appears so as to distinguish a line of products that are identical to those on which the claimants use their mark (car deodorants) – would be invalid and indeed constitute infringement of the mark owned by the claimants. It would also amount to conduct of unfair competition due to slavish imitation (of the retail packaging and of the colours used in association with identical fragrances) as well as misappropriation.

The Court of Milan held that the marks in question would cause confusion, in light of the highly distinctive character of the JSL marks and of the intrinsic characteristics of the signs (considering that the shape of the stylized tree far outweighs the denominative component of the mark and is also entirely fanciful, as it does not describe in any way the fragrance of deodorants presently under scrutiny) as well as of the reputation enjoyed among the consuming public.

The Judges in Milan thus found an infringement of the JSL marks on part of the “Forest Fresh” mark, which they held invalid. The Court also decided that the conduct of the defendant company amounted to unfair competition due to slavish imitation, as resulting from the risk of confusion between the signs, and misappropriation, seeing as the defendant presented products in the same way and made use of identical distribution channels (exhibiting them in motorway recreational shops, gas stations, shops selling housing items and supermarkets) via packaging that was also completely identical, for the sole purpose of “riding on the coattails” of the competitor. Finally, the Court also held that art. 2598, n.3, of the Civil Code, was applicable to the case at hand.


SIMONA LAVAGNINI AMONG THE AUTHORS OF “THE DIGITAL SINGLE MARKET COPYRIGHT. INTERNET AND COPYRIGHT LAW IN THE EUROPEAN PERSPECTIVE”

07/07/2016

The last monographic volume of the series “Law and Policy of New Media” has been published. The volume, supervised by Mr. Mario Franzosi, Mr. Oreste Pollicino and Mr. Gianluca Campus, collates the documents of the Seminar organized in November 2015 by the Permanent Judicial Organization in collaboration with AIPPI. The work studies in depth the issues concerning circulation of digital contents within European territories, in light of the most recent technical and legislative innovations.


Ms. Simona Lavagnini has contributed by redacting the chapter titled “The Directive 2014/26/EU on collecting societies and the user’s perspective”, critically analyzing the points concerning the monopoly of which collecting societies de facto benefit from in individual European states. Specific attention is given to the user’s perspective, who is forced to negotiate with a single entity.

Ms. Simona Lavagnini has considered various possible solutions at a European level, such as to guarantee the right balance between the positions of the individuals involved. Ms. Lavagnini’s work examines the tendency to extend the application of competition rules to collecting societies, as well as the option of applying stringent norms with a view to imposing greater transparency for the protection of users and of the public interest.


 

MS. SIMONA LAVAGNINI IS AMONG THE AUTHORS OF THE VI EDITION OF THE “COMMENT ON THE LAW OF INTELLECTUAL PROPERTY AND COMPETITION” EDITED BY WOLTER KLUWER-CEDAM

22/06/2016

The sixth Edition of the “Comment on the law of Intellectual Property and Competition”, which for years has represented the go-to manual for practitioners, is currently being published.


As in previous editions, the name partner Ms. Simona Lavagnini has contributed to the Comment by providing an analysis of certain copyright rules, particularly art. 16-bis concerning communication to the public via satellite and cable re-transmission, arts. 100, 101 and 102 on protection of ownership, indexes, exterior appearance of a work, articles and news, as well as arts. 102-quater and 102-quinquies regarding technological protection measures and information on the rights regime.

Additionally, Ms. Lavagnini has provided significant contribution to the comment on the law regulating databases, a subject in which she is extensively experienced, and in this connection has also covered the introduction to and analysis of arts. 64-quinquies and 64-sexies concerning protection of databases that may be qualified as creative works, as well as arts. 102-bis and 102-ter which provide for the rights of the creator of a database protected by the sui generis right.