[Guest Post] Of Snakes and Artistic Value: Bologna IP Court Slithers Through Design, Shape Marks and Copyrights in a post-Cofemel landscape

[Marcel Pemsel]

[Guest Post] Of Snakes and Artistic Value: Bologna IP Court Slithers Through Design, Shape Marks and Copyrights in a post-Cofemel landscape

Marcel Pemsel Thursday, March 05, 2026 - Bulgari, Cofemel, copyright, designs, Guest post, jewellery, Luigi Manna, shape mark, trade marks, unfair competition

The IPKat has received and is pleased to host the following guest post by Katfriend Luigi Manna (attorney at Martini Manna & Partners), commenting on a decision from the Bologna IP Court. Here is what Luigi writes:

Of Snakes and Artistic Value: Bologna IP Court Slithers Through Design, Shape Marks and Copyrights in a post-Cofemel landscape 

by Luigi Manna

A recent ruling of the IP Court of Bologna (no. 3744/2025 of 17 December 2025, unpublished) offers a significant example of the interaction between design, trademark and copyright protection under Italian law.

Facts of the Case

In 2023, Bulgari sent a cease-and-desist letter to a company based in the Romagna region marketing a modular plastic necklace. The maison alleged infringement of its registered design rights, copyright, and de facto shape mark rights in certain jewels from its “Viper” line, characterized by a snake-like design.

The contested necklace was marketed in several versions, differing mainly in the shape of the clasp.

The alleged infringer brought a preventive action before the IP Court of Bologna, seeking a declaration of non-infringement. Bulgari counterclaimed, seeking a declaration of infringement of two registered international designs (whose nullity the claimant requested by way of counterclaim), infringement of copyright in the same designs, infringement of a de facto shape mark, and unfair competition. Bulgari also sought an injunction, destruction of products, withdrawal from commerce and damages.

The two registered designs feature trapezoidal links inserted one into the other, a loop fastening with a clasp reminiscent of a viper’s head, and a “tail” element sliding perpendicularly with respect to the fastening point.

As regards the alleged de facto shape mark, Bulgari identified it in the distinctive trapezoidal shape of the links, said to evoke snake scales.

The Registered Designs

The Court upheld the validity of the two designs, rejecting the claimant’s nullity action. The prior art invoked related only to isolated formal elements - such as a snake-bite-style clasp used in Elsa Peretti’s 1974 Snake necklace for Tiffany - but did not anticipate the overall combination of features.

However, infringement was denied.

A decisive element was the different material composition: the contested necklaces were made of plastic, whereas Bulgari’s designs are characterized, according to the Court, by precious metals and stones. This difference, in the Court’s mind, significantly altered the appearance and produced a completely different overall impression on the informed user.

 

 

Although materials may contribute to a design’s appearance, their relevance depends on whether they are inferable from the representation and capable of affecting the overall impression. EU case law generally focuses on shapes, lines and contours, partly to prevent easy circumvention through material changes.

In the present case, the Court treated the use of precious materials as an inherent feature of the registered designs. While the representations did not expressly restrict the designs to specific materials, the shift to plastic was deemed sufficient to generate a different overall impression. The reasoning appears to lean toward a product-to-product comparison rather than a strictly design-to-product assessment.  

The De Facto Shape Mark

The Court denied the existence of the alleged de facto shape mark relating to the trapezoidal links.

First, the shape was considered functional, as it was necessary to achieve a technical result, namely concealing the junction points between links. The Court recalled that a shape may be regarded as necessary even if alternative solutions exist, provided it lacks characteristics other than functional ones. Implicitly, it rejected the argument that the trapezoidal form had additional non-functional, evocative elements.

Second, the trapezoidal shape was held to confer substantial value on the product. Here, the Court anticipated its later finding on artistic value and concluded that the trapezoidal link, in addition to being functional, also contributed to giving substantial value to the product.

Italian case law often equates shapes endowed with artistic value and shapes conferring substantial value, even though the two notions differ conceptually and functionally. In this case, however, artistic value was recognised for the necklaces as a whole, as seen hereinafter; the decision’s application of the same reasoning to a single component may raise interpretative questions.

Unfair Competition

The Court also rejected the unfair competition claim. Bulgari operates in the niche luxury jewelry market, whereas the claimant’s products were costume jewelry sold at a fraction of the price.

The assumed absence of overlapping clientele and the fact that the products met entirely different market needs led the Court to exclude the existence of a competitive relationship, a necessary condition for unfair competition under Italian law.

This conclusion reflects a restrictive approach to the notion of “common clientele,” whereas other decisions, including a recent ruling of the Italian Supreme Court (no. 24006/23, Rolex case), have adopted a broader interpretation.

Copyright Protection

The Court partially upheld Bulgari’s copyright claim.

Under Article 2(10) of the Italian Copyright Law, industrial design works are protected by copyrights only if they possess both creative character and “artistic value”, the latter being an additional requirement not imposed on other categories of works.

The Court found both criteria satisfied.

Regarding creative character, the Court considered that the combination of expressive elements in the “Viper” colliers’ specific configuration resulted from original, free and creative choices, not dictated by technical constraints or anticipated by other works.

As to artistic value, the Court relied on external recognition: a short film dedicated to the necklaces, their exhibition at the Gallery of Modern Art in Milan, and coverage in the specialised press. The Court thus applied the established principle that artistic value may be inferred from recognition within qualified cultural environments.

Having recognised copyright protection, the Court examined infringement. Only one specific version of the claimant’s necklace - featuring a rhomboid clasp - was found infringing. That version reproduced the trapezoidal links, loop clasp, and clasp shape evocative of a snake’s head, which the Court identified as the expressive elements of the protected work. The use of plastic did not amount to a creative modification capable of excluding infringement; even if it had, it would have required authorisation as an adaptation. 

The version of the claimant’s necklace deemed infringing

A central issue concerned the compatibility of the Italian “artistic value” requirement with EU law in light of the ECJ’s 2019 Cofemel judgment (which The IPKat has addressed on multiple occasions, see e.g. here and here).

Bulgari argued that, following Cofemel, Article 2(10) of the Italian Copyright Law should be disapplied or interpreted so as to eliminate the artistic value requirement altogether.

The Bologna Court adopted an intermediate position. It held that the national requirement is not incompatible with EU law but must be interpreted in a non-excessively restrictive manner.

This reasoning echoes a 2021 decision of the IP Court of Venice concerning Murano-style chandeliers, which similarly suggested that, in light of Cofemel, artistic value should not be assessed through particularly rigorous standards.

In practical terms, these decisions indicate a lowering of the threshold for recognising artistic value in industrial design works, while formally maintaining the statutory requirement.

Damages and Remedies

The Court partially upheld Bulgari’s claims for remedies.

Claims for damage to image and loss of value of intangible assets were rejected. The sales volumes of the infringing product were deemed negligible and incapable of affecting the brand’s image.

As for lost profits, in the absence of proof of decreased sales of the original product, the Court awarded damages based on a hypothetical royalty equal to 12% of the claimant’s revenues, increased by one third to reflect the compulsory nature of the licence (so-called “reasonable royalty”).

Disgorgement of profits was denied, since Italian copyright law does not expressly provide for it as a concurrent remedy, unlike the Italian IP Code for industrial property rights. The rejection of design infringement therefore had a direct impact on the scope of damages.

Finally, the Court granted an injunction against production, promotion and marketing of the infringing necklace, ordered destruction of existing stock at the defendant’s expense, and ordered withdrawal from the market. It excluded, however, any obligation to repurchase products from end customers, considering such a measure disproportionate.

Costs were borne by the claimant, subject to partial offset in light of the partial rejection of the counterclaims.