An Italian ruling allows companies to use intellectual property law to protect the design of their shops in certain circumstances. This opens up an interesting way of protection for those firms that decide to invest in design to achieve a differentiated image in their establishments.

Not only fashionistas associate a store design to a particular brand. Companies invest large amounts of money to provide a consumer experience that differentiates them from their competitors and reinforces their brand image. Can a store design be protected? Sometimes, yes. Having said that, the inevitable question is how? In theory, there are three ways:

  •  industrial design, whether registered or unregistered;
  • three-dimensional trademarks; and, now,
  • copyright.

Recently, the Italian Supreme Court confirmed the ruling of the Milan Court of Appeal in a judicial proceeding involving alleged plagiarism of the KIKO’s store design by one of its competitors, WYCON. It appears that WYCON was too inspired by the design of KIKO and the latter decided to sue. The Italian courts agreed with KIKO, both at first and second instance, on the understanding that the design of its shops was protected by Article 2(5) of the Italian Intellectual Property Law, i.e. as an architectural work. As a result of the plagiarism, WYCON was forced to remodel its shops and pay KIKO a substantial compensation.

It is relevant that the design of the KIKO shops, in particular the way in which their counters are combined, has been declared eligible for copyright protection as an architectural project.

What is interesting about the Italian Supreme Court of Cassation’s judgment of 6 February 2020 is that, for the first time, a Member State court is applying its national law in the light of the ruling of the Court of Justice of the European Union (CJEU) of 12 September 2019 in Case C-683/17, “Cofemel Case”. For those who missed the most important case in the fashion world in the last year, I will summarize it: the CJEU established that design protection through intellectual property law is only possible if two requirements are cumulatively met: (i) it has be pinned down with precision and objectivity (see ruling of the CJEU of 13 November 2018 in Case C-310/17), and (ii) the design has to be original within the meaning of the ruling of the CJEU of 16 July 2009 in Case C-5/08.

In the light of recent case law of the CJEU, and in particular the Cofemel Case, the Italian Supreme Court acknowledges that protection through intellectual and industrial property can exist at the same time: “the Union legislator has opted for a system in which design protection and copyright protection are not mutually exclusive but can be combined” (page 20 of the ruling). The Italian court states that choice and organization of the elements of the store (the counters) requires a creative character and not mere indications: “it was a specific form of expression, a well-defined plan for interior design, and not a series of abstract indications which could be modified according to the different contexts of use, that is to say, the different structures into which the individual components are inserted” (page 13 of the ruling).

It opens, of course, an interesting way of protection for those firms that decide to invest in design to achieve a strongly differentiated image. In the European Union, the industrial design route seems the most natural pace when it comes to protecting the appearance of a commercial establishment. However, industrial design requires that the company has done its homework by registering the design with the corresponding office (e.g. EUIPO or SPTO, among others). The company has a period of one year from the date it was made public, so after this period without registration, protection against copying requires the search for alternative ways. The Council Regulation on Community Designs even gives a second chance to the lazy ones, by granting protection to unregistered designs for a period of three years as from the date on which the design was first made available to the public.

What Cofemel, and now the Italian Supreme Court, are telling us is that in certain circumstances companies will also be able to use intellectual property law to protect the design of their commercial establishments. What circumstances are these? Those established by Cofemel: the existence of a work and its originality.

Eva Golmayo

Garrigues Intellectual Property Department