A “Phantom” infringement of the “Skeleton” frames: The Court of Milan “ghosts” the exclusive rights of a Registered Community Design on eyewear frames

Vincenzo Iaia, Andrea Klein

With the decision no. 248/202l the Milan Court of first instance ruled on a Registered Community Design infringement case between two eyeglass frames whose names also reminds us of the underworld. In particular, an eyewear company producing the “Skeleton” design (already registered at the EUIPO) sued a competitor for design infringement and for having advertised frames under the name “Phantom”. The claimant asked the Court to ascertain the infringement and, accordingly, to issue an injunction that would have prevented the defendant from producing, commercializing, and promoting the allegedly infringing frames. In the alternative, the rightsholder invoked the application of unfair competition rules both for slavish imitation and unfair conduct, under Art. 2598, no. 1) and 3) of the Italian Civil Code.

As regards the infringement of the Community design, the Court observed at the outset that the registration certificate does not describe the specific shape claimed, with the consequence that exclusive rights cannot be extended ex post to elements that are not specified in the registration of the design. Hence, the Court shared the defendant’s view that the holder cannot claim a blanket monopoly over the material of which the eyeglass frames are made, and also on some details (a full dot at the hinge and the perforated nose-pads) since these were not visible from the designs, as filed. Such circumstance prevents the appreciation of the individual character of these elements, as well as the coplanarity of the lenses with respect to the frame or the thickness of the frame and the temples depicted in the model.

Furthermore, the Court upheld the defence of nullity of the Community design due to the prior de facto model produced by Jean Paul Gautier under serial no. 55-2178 which anticipates the same solutions considered individualizing for the plaintiff’s “Skeleton” frames. Despite differences between the two frames, the Judge considered that the distinguishing elements were not sufficient to create a generally different impression considering the standard of the informed observer.

Model no. 55-2178 produced by Jean Paul Gaultier

As regards the unfair competition claim, the Court compared the “Phantom” model with the “Skeleton” one and excluded it on the basis, inter alia, that:
1. the temples are different, since in “Skeleton” they consist of a rectangular shape – divided by three lines and two quadrants – which then tapers towards the arched end, while in “Phantom” they are thinner;
2. the extremity of the “Skeleton” frame is full and black, while the extremity of the “Phantom” frame is “empty” like the temples;
3. the corners of the “Skeleton” frames retain the subdivision into three parts of the temples, while in “Phantom” they are empty.
4. the “perimeter” part in the “Phantom” frame is reduced to a single line in the lower part of the lens, surrounding it, while the “Skeleton” frame has two lines that leave a space between the lower edge of the lens and the frame.

“Skeleton” model

“Phantom” models

Two preliminary conclusions can be inferred. Firstly, design concepts, such as minimalistic eyeglass frames cannot be monopolized. Furthermore, the conceptual similarity of the commercial names would not strengthen an unfair competition claim. In addition, the decision highlights the crucial relevance of specifying the individual elements of a design in the registration in order to grant legal certainty on the scope of protection, particularly in the crowded eyewear design field that, in addition, is characterized by recurring trends. As such, an infringement action in a very crowded design field can be successful if the infringer copies almost entirely the individualizing features of a previous model. Otherwise, it would be better to “ghost” its desire of exclusivity!

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