(An Italian version is published also on Diritto 24 – Il Sole 24 Ore)

On 30 December, the IP Court of Turin ruled as a precautionary measure for the protection of the registered designs of some showerheads. The subject matter is the same as we discussed here a few days ago in reviewing a decision by the Milan IP Court.

In this case, the comparison was made between the Registered Community Designs ns. 000600549-0046, -0047 and -0048 held by S.R.C. Spa, and the products of a competitor, depicted in the second set of images below.

modelli registrati CRS

prodotti Zinox

In the decision under review, the judge hearing the case first shared the view of the expert witness that, having examined the prior designs, found that the C.R.S. registered designs​possessed both legal requirements for their validity, aka: i) novelty, “because they differ from all the others for a clear impression of lower volumetric footprint“; and ii) individual character, “because, from a synthetic and comparative examination, it emerges that they generate on the informed user an overall impression of dissimilarity with the previous forms, as the C.R.S. showerheads give an overall impression of lightness due to the thin profile of the diffuser with respect to the significant volume of the water valve, and more generally to the dimensional ratio between the (very large) width and the (very small) thickness of the diffuser.

Again sharing the opinion of the expert witness, the judge then concluded – within the limits of her preliminary ascertainment – that the registered designs in question were infringed by the competitor’s products. Here is her reasoning: “the assessment must be made based on the criterion of the overall impression, which by its nature is based on a summary judgment and not on an analytical assessment of the individual elements. In this perspective it is therefore not relevant, in itself, that there are differentiating details, such as those highlighted by the defendant (that is, the protruding screws), but what matters is whether those details are able to generate a different overall impression of the product, namely if those details are suitable to differentiate sufficiently widely the impression given by the main elements. In this case, this does not happen: the infringing products absolutely identical line makes the overall impression on the informed user not tarnished by the presence of one different element of detail, which might rather convince customers that it is a variant of the same product (i.e. a different item of the same line), rather than a different product.

From the procedural standpoint, the judge also rejected the defendant’s objection that C.R.S. had waited too long to commence preliminary proceedings, thereby proving the non-existence of the urgency required for the granting of interim protection. This issue, which is much debated, has already been discussed here and here on this blog. In this respect, the judge found that “the specific rules laid down in legislation, in particular art. 131(1) IP Code, allows that the injunction be granted, even outside of the more stringent conditions set forth in general by art. 700 Civil Procedure Code, on the sole condition that the violation of the IP right is imminent, and to the aim of preventing the continuation and repetition of the violations taking place.

In light of the foregoing, the judge enjoined the manufacture, trade, export and/or import, distribution and delivery of the infringing showerheads and ordered their withdrawal from the market, with the establishment of a penalty of € 1,000 for each day of delay in the enforcement of the order and of € 500 for each product marketed in violation of the injunction.

It should however be noted that this is an interim decision which, as such, could be reversed at the outcome of the main proceedings that the parties may now start.