With its decision of 25 March last, the Court of First Instance of Rome found for Geox in a dispute concerning trademarks, unfair competition and protection of the unregistered design “D Energy Walk” against defendants Euro Scarpe Hang Xinhia and Joy Fashion s.r.l., respectively producer and retailer of a shoe which is very similar to the one enforced.
The Panel found that the well-known trademark Geox was entitled to protection and that the defendants were guilty of conduct giving rise to a likelihood of confusion and free-riding.It also ruled that the plaintiff’s design was infringed pursuant to Article 19.2 Council Regulation (EC) no. 6/ 2002, proceeding to give a brief reconstruction of the rules relating to unregistered Community designs.
Unregistered designs are entitled to temporary protection for a period of three years as from the date on which the design is first disclosed to the public, pursuant to Article 11 of the Regulation. Said protection meets the need to obtain short term protection without the requirement of formalities or payment of registration fees. Industrial sectors producing an immense quantity of product designs which quickly become obsolescent have a need for such protection.
In sectors such as that of clothing and – as in the case at hand – footwear, public taste and the market need to be sounded out prior to registration costs being incurred. Products are often linked to a single collection and, albeit of a seasonal nature, are often copied, the resulting imitations exploiting their innovations of design and style.
In the case at hand the Court ruled that the design disclosed by Geox met the requirements for protection as a unregistered design, finding that there was novelty and individual character in the combination of all its characterizing features – the thickness of the sole, the structure of the heel, the wave patterns on the tread, the structure of the upper, plain at the front and embellished with contrasting features in fabric and leather in discontinuous, superimposed lines at the rear - and stating that the infringing design did not possess characteristics such as to give rise to a different impression in the informed user, given the slavish imitation of the original shoe.
Having ascertained that the trademark and unregistered design were infringed and that the defendants were guilty of unfair competition pursuant to Article 2598 no. 1 and no. 2, the Court enjoined the defendants against further production, marketing, offer for sale, promotion or distribution of the contested footwear, ordering that it be withdrawn from the market. It also instructed the defendants to pay compensation for damage suffered and ordered publication of the operative part of the decision.
Here is the full text of the decision