Press release of May 29, 2013
On March 28, 2013, the Milan District Court confirmed that sunglasses sold by PRADA S.A. under the name “Post Cards” are protected by an unregistered Community design and, at the same time, found the model “Lollipop” offered by NAU S.R.L to infringe such design rights. Parallel to that, the Court granted claims based on unfair competition by parasitism in relation to four additional models. This decision is particularly relevant because eyewear is a particularly crowded field of designs but is also the often the “victim” of parasitic imitations.
The dispute, in which BARDEHLE PAGENBERG acted on behalf of PRADA, involved eyewear created by PRADA, the model “Post Cards”, a new creative elaboration in relation to the models “butterfly” evocative of the 1950s icons made famous by actress Audrey Hepburn. The decision not only confirmed unregistered design protection for the PRADA models but also that the accused conduct took improper advantage of the “huge investments made by Prada S.A. to promote the ‘Post Cards’ model” as well as of the “creative activity that led to the creation of that model.” The decision emphasized the contributions made by PRADA in the very crowded field of eyewear design.
As regards damages, PRADA was granted claims for the recovery of the profits made by NAU, amounting to EUR 40,000.00, together with the damage caused to the advertising investments, amounting to EUR 30,000.00, as well as damages to the image amounting to further EUR 30,000.00, plus a claim for publication of the judgment in a journal (“DONNA MODERNA”) and on the infringer’s website for 30 consecutive days.
Representatives of PRADA S.A.:
BARDEHLE PAGENBERG Studio Legale Casucci Ferretti STP (Milano):
Giovanni F. Casucci (Attorney-at-Law, Partner),
Niccolò Ferretti (Attorney-at-Law, Partner),
Serena Tavolaro (Attorney-at-Law)
Representatives of NAU S.R.L.:
Studio Legale Cocuzza e Associati:
Claudio Cocuzza (Attorney-at-Law),
Sabrina Giani (Attorney-at-Law),
Stefania Sansò (Attorney-at-Law)
Milan District Court:
Dr. Marina Anna Tavassi (Presiding Judge)