COPYRIGHTS AND DESIGN – CASE LAW

According to the Milan Court, the Sorgente glass imitates the Ty Nant bottle to such a degree that the public may consider the two items as coming from the same enterprise: the decision holds that the glass infringes both copyrights and 3D trademark rights in the bottle.

The Ty Nant bottle, designed by Ross Lovegrove.

Renowned Welsh designer Ross Lovegrove is the author of a plastic bottle design named “Ty Nant” (Welsh for “house by the stream”) created in 2002 and used by Ty Nant Spring Water Ltd. to bottle the water from the Welsh spring of the same name.

Mr Lovegrove, Ty Nant Spring Water Ltd. and the company’s (Italian) owner brought proceedings before the District Court of Milan (the court) against Bormioli Rocco S. p. A., an Italian glass and tableware manufacturer, claiming that the series of glasses named “Sorgente” manufactured and sold in Italy by Bormioli Rocco infringed copyrights in the Ty Nant bottle as well as trademark rights arising from a Community 3D trademark registration of the bottle’s shape, covering bottled water, bottled mineral water, spring water and aerated water in Class 32.

The court found that the Ty Nant bottle design possessed sufficient novelty, creative character and artistic value to be eligible for copyright protection under Article 2 (10) of Italian copyright law. The Court identified the designer’s use of lines, folds and curves in the plastic bottle to represent and evoke the idea of running water as the innovative concept of the design.

The court based its assessment also on the appreciation of the bottle as a work of art proved over the years by the its inclusion in the collections and exhibitions of major museums of art, nomination for design awards and publication in leading design, architecture and fashion magazines.

Turning to the Sorgente glasses, the court found that they were made of glass worked to imitate the effect of the fluidity of water and reproducing exactly the lines, curves and folds of the Ty Nant design, and that by examining the glasses close to the Ty Nant bottle it was possible to perceive a continuum between the two objects.

The Sorgente glass, manufactured by Bormioli Rocco.

According to the court, since a bottle and a glass satisfy the same need primary to drink and the two items are normally used together, consumers can easily be led to believe that the two products come from the same enterprise. Therefore, the court found that, although the Ty Nant trademark registration does not cover glasses, there was a likelihood of confusion caused by the similarity between the Ty Nant 3D trademark and the design of the glasses.

In its decision No 11700 of 1 December 2015, the court held that Bormioli Rocco had infringed both the copyrights and trademark rights in the Ty Nant bottle’s design, and ordered the Italian company to stop producing and marketing the glasses, fixing a penalty for each glass sold in breach of the order.

Concerning the payment damages, the court ordered further proceedings in which Bormioli Rocco will be ordered to produce information on its profits from the infringing items.

21 December 2015