On June 21, 2018, the Industrial Property Court of Rome issued its decision in Fendi v. Felipe Oliveira Baptista Sas
(FOB) (n. 12760/2018, file R. 649506/2011), following Fendi’s request for a declaration of noninfringement.
Fendi received a warning letter for infringement of a copyright (lady’s garment, model “Kinsky”) by FOB and asked the court to declare its fairness in trade.
FOB successfully counterclaimed. The court recognized the novelty and individual character of FOB’s unregistered design; however, copyright was not recognized due to lack of artistic features.
What is noteworthy is that the court recognized protection for FOB’s design, rejecting the defendant’s argument that draperies, the transversal folds, and combinations of colors were common fashion characteristics from centuries ago.
On the contrary, the court considered these elements to be novel and characteristic of a new, creative trend which was exhibited in the first exhibition in Paris, in June 2008.
The court recognized FOB’s right in the unregistered community design and said that it was infringed by Fendi, and consequently granted:
- An injunction, setting a fine of EUR 2,000 (USD 2,271) for each act of non-compliance with the court’s order;
- Seizure, withdrawal from trade, and destruction of all counterfeited items within 30 days from the date of judgement; and
- Compensation of approximately EUR 52,000 (USD 59,000), plus revaluation and legal interests.
Notably, the court awarded an injunction despite the expiration of the three-year protection period, which ran from 2009 - 2012, of the unregistered design.
This decision differs from that of Milan’s Industrial Property Court in Diesel-OTB v. Zara.
Case 5390/2018, para. 4. In that case, the Milan IP Court denied an injunction against the infringer of an unregistered design because the three-year protection period was expired.
The judgment in Fendi v. FOB
may be appealed through the end of 2018.
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© 2018 International Trademark Association