The assessment of both the originality and the infringement of a design is one of the most delicate and complex aspects of design law. Although the applicable criteria are clearly set out under both Italian and European legislation, their practical application requires a careful analysis of the overall impression produced on the so-called “informed user”. A recent decision of the EUIPO Board of Appeal provides an important operational guideline, clarifying the weight to be attributed to common sector elements as opposed to distinctive aesthetic features.
The criterion of overall impression
As is well known, both Italian law and the European Regulation on Designs provide that, in order to assess both the originality and the infringement of a design, a global assessment must be carried out. Such assessment must verify (with regard to validity) whether the overall external impression produced by the design on an attentive user (the so-called “informed user”) is objectively different from that produced by earlier designs made available to the public, and (with regard to infringement) whether the contested design produces, for the same user, an overall impression that is not dissimilar to that of the protected design.
While this principle is clear in theory, in practice – save for the rare cases of absolute identity – it is almost always difficult to determine whether a design actually reproduces the same overall impression as a registered design and therefore constitutes an effective infringement.
The specific case and the Decision of the EUIPO Board of Appeal
In this context, the EUIPO Board of Appeal recently issued an important clarifying decision (case R 179/2025-3). The Board confirmed that, where the designs in conflict share common and typical elements of a given sector, it is the original aesthetic differences that determine the overall impression of the informed user and, consequently, whether infringement exists.
In the specific case – concerning the footwear sector – the contested design and certain earlier designs displayed a number of similarities, such as the presence of laces, a textile collar, and a sole tapering from heel to toe. The Board recognised these features as widespread within the sector and as well-known characteristics to which the informed user would not pay particular attention.
However, the Board of Appeal attributed decisive importance to the differences that were visible and perceptible during the normal use of the product. Among the elements considered to have an impact on the overall impression were: the upper’s surface treatment (smooth in the contested design, articulated with various patterns in the earlier designs); the heel counter (more pronounced and separate in the earlier designs, integrated into the upper in the contested design); the different number of lace eyelets; the toe cap (reinforced in the earlier designs and absent in the contested design); and a looped pull tab (present only in the contested design).
Taking into account all the relevant elements as a whole, the Board concluded that the designs at issue did not produce the same overall impression and that, therefore, one did not infringe the other.
Practical implications for design protection
This decision represents a concrete application of a fundamental principle in design law, namely that elements which are common and typical of a given sector carry reduced weight in the assessment of the overall impression, whereas original and visually perceptible aesthetic differences for the informed user play a decisive role.
For holders of registered designs, this confirms that effective protection may be secured even in the presence of recurring features, provided that the aesthetic elaboration includes distinctive elements capable of generating an overall impression different from that of previously known designs.
Naturally, the practical application of this principle requires the involvement of experienced professionals capable of identifying and enhancing significant aesthetic differences already at the design registration stage.