A Ruling of the IP Court of Bologna on the Concept of the “Informed User” in regard to Components of Complex Products
(IP Court of Bologna, Judgment no. 1041/2014 of 28.03.2014)
Ruling in a court case centred around the component of a complex product, the IP Court of Bologna, partially contradicting its own appointed expert, made some interesting points on the concept of the “informed user” in design matters.
A manufacturer of pan supports for gas hobs sent a warning letter to a well-known manufacturer of home appliances for cooking, claiming that the latter had infringed its rights on the registered design of a particular pan support by incorporating it into one of its home cookers. The company reacted by filing a declaratory judgment action for invalidity and non-infringement before the IP Court of Bologna. The design owner, in turn, sought a declaration of design infringement and unfair competition by way of a counter-claim. Pending trial, the Court appointed an expert witness to provide an opinion on validity and infringement.
For the purpose of assessing the validity requirements, and in particular the individual character of the design in suit, the expert witness took the manager of the purchasing department of a cooking appliances manufacturer as a reference model of an “informed user”. This subject, in his opinion, would appreciate the significant differences existing between the profile section of the registered design and that of the relevant prior art, hence the design should be considered to have individual character.
In assessing infringement, on the other hand, the expert witness instead chose, as a representative model of an “informed user”, the end user, i.e. the homemaker. In his view, the latter, while intent on purchasing the kitchen, would not be able to grasp the elements of differentiation between the pan support actually incorporated into the allegedly infringing product and the registered design. He concluded, therefore, that the plaintiff’s product did infringe the registered design.
The Court, however, rejected this approach. Having pointed out the specificity of the concept of the “informed user” in the matter of registered designs, and its distance from the “average consumer” (incorrectly) borrowed from trademark law, the Court stated that the informed user cannot be arbitrarily split in two different reference subjects, as the expert witness had, and that, in respect of the component parts of complex products, the informed user must be identified in a person who intermediates between component manufacturers and manufacturers of complex products, for the purpose of placing the component with the economic players that assembly the final product and sell it to the end user.
On these premises, the Court disagreed with the expert witness’ conclusions. Arguing that the (unique) informed user would, at once, appreciate the individual character of the design in comparison with the relevant prior art, but also perceive the features that distinguished the former from the pan supports used in the plaintiff’s product, the Court found that the design in suit was valid, but not infringed by the plaintiff.
The Court also dismissed the defendant’s (secondary) counterclaim of slavish imitation. Having pointed out that the question must be considered in the framework of unfair competition by way of customer confusion, the Court found that the item for which protection was sought was incorporated into a complex product known by itself on the relevant market for the notoriety of its brand and the accuracy and quality of all its various components (knobs, handles, hatches and so on). The Court judged that this was a context in which the mere shape of the pan supports would be deprived of any actual distinctive capacity, making any confusion of the end user “virtually impossible”.