Italy special report: protecting your rights at Il Salone del Mobile of Milan

22nd April 2014

1 April 2014, Milan

From 8-13 April 2014, Il Salone Internazionale del Mobile will be held in Milan. With more than the 68% of foreign operators, it is considered one of the most important global showcases in the design furnishing industry. Of course, whilst it is on, Milan becomes alive with fashion and design shows in every corner of the city.

If you are planning on attending to showcase your design, you need to be well prepared against possible infringements. The following suggestions may help.

Some questions need to be answered in advance of the fair. Firstly, is my product protected against possible copying? In other words, is it covered by intellectual property rights?

• The owner of an intellectual property right (including registered and unregistered designs and trade marks) is entitled to file an application with the Company Specialized Section of the Court of Milan seeking for an order of judicial description (descrizione giudiziale) of the suspected infringing items being displayed at the fair. If considered well grounded (i.e. if the Court agrees about the likelihood of the enforced right being both valid and infringed), the Court bailiff, together with an expert appointed by the Court, is invited to access the fair and “describe” the suspected infringing products, taking pictures and possibly taking other available evidence of the infringement. This will allow the right owner to take possible enforcement action for the infringement (including getting a preliminary injunction and seizure of the infringing products).
• So, if it is possible that you might need to enforce a registered intellectual property right, such as a Community or Italian registered design, you should make sure that you have with you all relevant documents and information, including copies of the registrations (or indeed applications which can also be enforced in Italy). The same applies if you have an International Design designating the Italian territory.
• If your product design is not registered, it may still be protected as unregistered Community design if first disclosed less than three years ago, but you would need to be able to demonstrate that this was the case.
• Moreover, you should also consider whether you can prove that, before your product was first made available to the public, no prior identical design was already known and that your design has individual character (i.e. it produces a different overall impression on the informed user than any other previously existing design)? In this regard, get as much as information as possible about the history of the product design: how it originated, what inspired the designer, how it was developed, and so on.
• Remember that an unregistered design disclosed less than one year ago may still be registered as a Community design.
• If you prefer to wait and to build a case, be proactive: gather any available evidence of the suspected infringement, such as brochures and leaflets, pictures demonstrating the exhibitions of the product during the fair and any written offer of the product.
• One last recommendation: bring an umbrella – Il Salone del Mobile without rain is almost unknown!
• Originally published in DesignWrites 3rd Edition.