• Judgment of 27 January 2011, C-168/09, Flos SpA v. Semeraro Casa e Famiglia SpA

On 23 November 2006, Flos brought proceedings against Semeraro before the Tribunale di Milano (Milan district court) complaining that Semeraro had imported from China and marketed in Italy a lamp called the ‘Fluida’ lamp, which, in its submission, imitated all the stylistic and aesthetic features of the Arco lamp, an industrial design in which Flos claimed to hold the property rights. It is apparent from the order for reference that, in interim proceedings preceding the action on the merits in which that order was made, it was found that the Arco lamp, which was created in 1962 and entered the public domain before 19 April 2001, was eligible for copyright protection as an industrial design under Law No 633/1941, as amended by Legislative Decree No 95/2001, and that the lamp imported by Semeraro ‘slavishly imitated all [its] stylistic and aesthetic features’. The court hearing the interim proceedings, by order of 29 December 2006, therefore confiscated the imported lamps and prohibited Semeraro from continuing to market them. As regards the proceedings on the substance, the national court states that, since these proceedings were commenced, legislative amendments have been made concerning copyright protection for industrial designs and that some doubt arises as to their conformity with Directive 98/71 and, more specifically, with the principle of cumulation of protection established by Article 17 of that directive. In particular, the national court refers in that regard to Article 239 of the IPC, as amended by Article 4(4) of Decree Law No 10 of 15 February 2007. In those circumstances, the Tribunale di Milano decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

By its first question, the national court asks, in essence, whether Article 17 of Directive 98/71 must be interpreted as precluding legislation of a Member State which excludes from copyright protection designs which were in, or entered into, the public domain before the date of entry into force of the legislation that introduced such protection into the domestic legal order of that State, either because the designs were never registered as such or because their registration had ceased to have effect as at that date, although they met all the requirements to be eligible for such protection.

By its second and third questions, which it is appropriate to consider together, the national court asks, in essence, whether Article 17 of Directive 98/71 must be interpreted as precluding legislation of a Member State which – either for a substantial period, namely 10 years, or completely – excludes from copyright protection designs which, although they meet all the requirements to be eligible for copyright protection, entered the public domain before the date of entry into force of that legislation, that being the case with regard to third parties who have produced and marketed products based on such designs in that State.

The Court hereby rules that Article 17 of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs must be interpreted as precluding legislation of a Member State which excludes from copyright protection in that Member State designs which were protected by a design right registered in or in respect of a Member State and which entered the public domain before the date of entry into force of that legislation, although they meet all the requirements to be eligible for copyright protection.

The court also considers that Article 17 of Directive 98/71 must be interpreted as precluding legislation of a Member State which – either for a substantial period of 10 years or completely – excludes from copyright protection designs which, although they meet all the requirements to be eligible for copyright protection, entered the public domain before the date of entry into force of that legislation, that being the case with regard to any third party who has manufactured or marketed products based on such designs in that State – irrespective of the date on which those acts were performed.

• Order of the Court (Sixth Chamber) of 9 September 2011, C-198/10, Cassina v Alivar and Galliani Host Arredamenti

Reference for a preliminary ruling – Corte d’appello di Milano – Interpretation of Articles 17 and 19 of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs – National legislation transposing the directive into national law by introducing copyright protection for designs – Right of a Member State to extend the conditions for the grant of such protection.

Article 17 of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs must be interpreted as precluding legislation of a Member State which excludes, either entirely or within the limits of prior use, from protection by the law of copyright of that Member State designs which entered the public domain before that legislation entered into force, with regard to all third parties who have previously manufactured or marketed in the national territory products based on those designs before that date.