Application Of Cofemel And KIKO

• Published date: 06 July 2020
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Copyright, Trademark, Trials & Appeals & Compensation
• Law Firm: HGF Ltd
• Author: Ms Lauren Somers

Can retail formats be protected by copyright?

In April this year the Italian Supreme Court gave its decision in relation to the longstanding dispute between Italian cosmetics company Kiko and its competitor Wycon.

Background

The two have been at loggerheads since 2009, with Kiko alleging that Wycon copied its concept cosmetic stores.

In 2005, Kiko invested a reported 700,000 EUR to develop a new appearance for its stores. The stores comprised of an open space, with walls featuring plexiglass storage boxes for cosmetics products, curved shaped islands in the centre of each store and use of the select colours, namely white, black and purple.

Despite failing in previous attempts, in 2013 Kiko received a favourable judgement from the Court of Milan. The court considered that copyright did subsist in Kiko's store layout, qualifying as "interior furnishing" under Italy's open list of works that can be subject to copyright. Further, that this work was original and had been copied by Wycon, so Wycon's stores infringed Kiko's copyright rights. Wycon's actions were also found to be in breach of the Italian Civic Code for "parasitic conduct".

Wycon, unhappy with the outcome and the cost order of 716,250 EUR, appealed the decision. The Court of Appeal upheld the original judgement on all of the grounds of appeal, including Wycon's allegation that the work was not an interior furnishing but an interior design which must have "artistic value" in order to enjoy copyright protection. The Court of Appeal dismissed this notion, deciding that the work was more suitably categorised as interior furnishings. Interior design applied to single items such as lamps, chairs, desks and the like. Whereas interior furnishing is more appropriate when considering a combination of elements.

Italian Supreme Court decision

Still unhappy, Wycon took the case to the Italian Supreme Court. This court has the ability to either confirm or reject the ruling of lower courts. It is unable to reconsider the evidence of a case, rather its focus is on guaranteeing the correct interpretation and application of the law.

Essentially, after a thorough review, the Italian Supreme Court endorsed the Court of Appeal's decision - there was no real change in the outcome for the two parties. But, within the decision, the court considered a number of interesting points of law. The first being the concept of originality post-Cofemel C-683/17, and the second being the cumulation of but difference between IP...