A recent ruling of courts in Milan, against ZARA for ingringing on designs by DIESEL and MARNI; discussed IpKat.

In 2016, OTB (headoffice of DIESEL and MARNI) prosecuted ZARA before the Milan courts, alleging that their jeans BIKER CERNIERA and their ZARA HOME sandals were infringing on their industrial property rights, their designs:

  • Community design (registered) and Unregistered design of DIESEL, for SKINZEE-SP2 skinny jeans.
  • Unregistered community design of MARNI, for its FUSSBETT sandal.

The Sentence

The Milan court has studied if the designs of OTB had a unique nature; and if the informed user could confuse these designs withe those of ZARA.

Unique Character of the Designs:

The court studied if the designs of OTB are protectable: if they have a unique nature. To do this, the court takes into account the level of freedom of design, as required by the Community Design Regulation. 

This freedom is limited, not only because the types of jeans and sandals are limited. But also because the fashion sector is very saturated: there are numerous creators. However, small differences in jeans and sandals, such as those incorporated with DIESEL and MARNI, are significant enough to be considered distinct designs and, therefore, protectable. 

The Informed User

Although the differences may be modest they are significant. If the «Informed User» can distinguish the products (jeans and sandals) as diffferent to the already recognised forms, this distinctiveness can justify the validity of the design. 

In any case, it is important to pay attention to the overall impression provided by the designs. In this case, said impression incorporated in the designs of DIESEL and MARNI could indeed differentiate their jeans and sandals from others. Therefore, they could not be immitated, as ZARA did.

Design Infringements 

The court conclued that the jeans and sandal design of DIESEL and MARNI are valid and protectable and ZARA infringed on them, according to the Italian court.

Santiago Nadal