The ruling of the Specialized Business Section of the Court of Bologna (R.G. 10791/2023, Chamber Order of 17 December 2025, Presiding Judge Guernelli, Reporting Judge Dioguardi) offers an important opportunity to reflect on the protection of design in the jewelry sector. In this field, the shape of the product often constitutes the primary factor of competitive differentiation, and the various intellectual property protection mechanisms—registered designs, copyright, shape trademarks, and unfair competition—inevitably tend to overlap. The dispute originated from a cease-and-desist letter sent by the holder of intellectual property rights relating to a well-known jewelry collection to a company marketing a modular necklace characterized by interconnected trapezoidal links and a clasp evocative of a viper’s head. Following this initiative, the recipient company brought an action before the Court of Bologna seeking a declaratory judgment of non-infringement with respect to the rights asserted in the letter, while the defendant, in turn, filed a counterclaim for infringement. The Court’s decision presents a multifaceted outcome. The panel confirms the validity of the registered designs invoked by the defendant but excludes their infringement. Conversely, it recognizes copyright protection for the jewelry design, finding infringement limited to certain specific configurations of the contested product. Finally, it rejects protection of the product as a shape trademark. With regard to the registered designs, the Court first dismisses the invalidity claim brought by the claimant in the infringement action. The prior designs cited reproduce individual formal elements—such as the reference to a scale-like texture or the fastening mechanism of the jewel—but are not capable of reproducing the overall combination of elements characterizing the registered designs. Consequently, according to the Court, the designs retain the requirement of individual character as provided by Article 33 of the Italian Industrial Property Code. A different conclusion is reached with respect to infringement. Applying the criterion of the “overall impression on the informed user,” the Court holds that the necklace marketed by the claimant produces a different overall visual impact compared to the registered designs. In particular, the panel places emphasis on the different nature of the materials used, observing that the contested necklace—made of plastic—belongs to a market segment profoundly different from the defendant’s high-end jewelry. According to the Court, this circumstance contributes to generating a distinct overall perception of the product. From this perspective, the ruling establishes a principle that may be considered novel—or at least open to criticism—in light of prevailing case law. Indeed, a significant number of decisions addressing registered design law have repeatedly affirmed that the assessment of overall impression primarily focuses on the product’s formal elements—lines, contours, and overall configuration—while differences relating to materials or commercial positioning have traditionally been regarded as secondary. The decision under discussion appears instead to attribute greater weight to these factors, introducing an element of partial discontinuity with consolidated jurisprudence. This approach aligns with observations already made in Judgment No. 6466/2015 (published 22 May 2015, RG No. 74967/2012), in which the Specialized Business Section of the Court of Milan, presided over by Judge Marina Tavassi, emphasized the importance of commercial context and material in assessing the infringement of jewelry designs. The decision also addresses the issue of shape-trademark protection. The defendant argued that the trapezoidal configuration of the links constituted a de facto distinctive sign of its collection. However, the Court rejects this protection, observing that the claimed shape contains a functional component, as it allows the links to be inserted into one another and conceals the junction points of the chain. From this perspective, the panel refers to the limitation set out in Article 9(b) of the Industrial Property Code, which excludes from registration and monopolization shapes necessary to obtain a technical result. Furthermore, the same configuration contributes significantly to the overall aesthetic appearance of the jewelry, reinforcing the conclusion that it cannot be exclusively appropriated as a distinctive sign. A particularly noteworthy passage concerns the copyright protection of the design. The Court recognizes that the necklace belonging to the defendant’s collection may qualify as a work of industrial design under Article 2(10) of the Italian Copyright Law. The configuration of the jewel results from creative choices not imposed by technical requirements and expresses a specific formal individuality. The requirement of artistic value is demonstrated by the recognition obtained by the design within cultural contexts and in the field of contemporary design. In support of this finding, the Court considers the evidence submitted by the defendant: necklaces from the “Viper” collection have been exhibited in qualified cultural settings and presented in artistic and museum initiatives, elements which testify to the recognition of the design by cultural and professional circles in the sector. In particular, the panel observes that the “Viper” necklaces, in addition to appearing in a short film presented at the Rome Film Festival, were exhibited at the Modern Art Gallery of Milan during an exhibition that received coverage in specialized art and design press. These circumstances were deemed sufficient to demonstrate recognition, by cultural and institutional circles, of the aesthetic and artistic qualities of the necklaces. This aspect of the reasoning appears particularly significant in the context of high jewelry, where the value of the product is not determined solely by the materials used, but also by the stylistic recognizability of the design and its ability to express a specific creative identity. In this respect, the decision forms part of the broader debate concerning the requirement of artistic value in Italian copyright law. As is well known, the case law of the Court of Justice of the European Union has progressively clarified that copyright protection for design works cannot be made conditional upon qualitative requirements beyond originality, understood as the expression of the author’s personality. In light of these indications, more recent national case law also tends to adopt a less restrictive approach in assessing artistic value, giving weight to external indicators such as the cultural recognition of the work or its dissemination within the design sector. The decision under discussion appears to move in this direction. While recognizing copyright protection for the work, the Court nevertheless limits the scope of the infringement. Counterfeiting is found only regarding the specific configuration of the product that reproduces the combination of the most characteristic elements of the original jewel—namely the sequence of trapezoidal links, the loop closure, and the clasp evocative of a viper’s head—whereas other variants of the necklace are not considered to infringe the defendant’s rights. This approach reflects principles already highlighted in Italian case law (see again Judgment No. 6466/2015 of the Court of Milan), where the court distinguished between substantial reproduction and marginal differences, limiting infringement to the distinctive and creative elements of the model. As regards damages, the Court awards compensation by applying the “reasonable royalty” criterion, calculated as a percentage of the revenues generated by the sale of the contested products. The amount awarded corresponds to 12% of the revenues derived from the products found to be infringing, increased by one third to compensate for the compulsory nature of the license, in line with benchmarks in the fashion sector. The ruling offers particularly interesting reflections for operators in the jewelry industry and, more generally, for companies whose competitive positioning is based on product design. First, it confirms that the validity of a registered design does not automatically entail a finding of infringement; rather, it is necessary to verify whether the contested product creates a substantially identical overall impression in the informed user. Second, it reiterates the structural limits of protection through shape trademarks, which cannot monopolize configurations that are functional or aesthetically determinative. At the same time, the judgment highlights the growing centrality of copyright as a tool for protecting industrial design, especially where the shape of the product represents an essential element of the brand’s identity and commercial value.
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