The Italian Design Law has recently been amended to comply with a European Directive No. 98/71/EC, which provides for changes to the industrial design laws of its Member Countries, with a view to their harmonization. In addition, the European Council has recently adopted the Regulation No. 6/2002/EC, which brings into force the Community registered and unregistered designs. The purpose of this new Community legislation is the enhancement of protection of design rights within the EU in recognition of the importance of industrial designs in the economy of Member States.
Under the new amendments to the Italian Design Law, an industrial design patent (also called ornamental model or design) can be granted in Italy for an industrial or hand-crafted article, including visible spare parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, while excluding computer programs.
The design of the product or of a part of the product may consist of its shape or other aesthetic features composed of lines, colours, surface structure, materials and/or other ornament.
The design must be new and have an individual character, and cannot be dictated solely by the article’s technical function.
In particular a design shall be considered to be new if there is no identical design (or substantially identical, but for immaterial details) having been disclosed or made available to the public before the date on which the design for which protection is claimed (either the date of filing or the priority date). However the disclosure does not constitute a bar to novelty in the following circumstances:
- if the disclosure could not reasonably have become known in the normal course of business to circles specialised in the sector concerned, operating within the Community);
- if the design was disclosed to a third party under explicit or implict conditions of confidentiality; or
- if the design has been disclosed in the 12-month period preceding the filing date or priority date by the designer, his successor in title or any third party as a result of information provided or action taken by the designer or his successor in title, or if such disclosure would constitute an abuse of the designer’s rights or of his successor in title.
Moreover, a design shall be considered to have an individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the filing date or the priority date. In assessing individual character, the degree of freedom of the designer in developing the design must be taken into consideration.
The Directive or the Italian law does not provide any further definition on the informed user, however it must be interpreted according to the preambles of the Directive and the workings of the European Parliament, which clearly indicate that the intention was to lower the threshold of registrability in order to foster the protection of designs, taking into special consideration the problem of assessing originality in an ever more crowded field.
Therefore, it is the author’s opinion that the informed user should be akin to the informed consumer, which is similar to the orientation of the ECJ in relation to the test of likelihood of confusion between trademarks.
The duration of protection conferred by a design patent is for a period of 5 years, renewable up to a maximum of 25 years.
In addition to protection by a registered design, the Italian Copyright Law has also been amended to protect works of industrial design which are creative and have an artistic value. This extended protection would apply in particularly to works of industrial designs which are renowned and have been included in museum collections.
However, the Italian Copyright Law has created a difficult compromise of special interests, since it provides that the copyright cannot be enforced for a period of ten years against parties who at the date of the entering in force of these provisions were using the design for which a registered design right had already expired. In contrast, those parties who cannot rely of the expiration of design rights can now be sued for copyright infringement.
The EC Regulation on Community designs will come into force on March 6, 2002, even if the implementing Regulation will be issued before the end of this year. The Community design is fairly similar to the scheme of the Directive, although it will be effective throughout the EU and its administration will be handled solely by OHIM.
Nevertheless the Regulation will be immediately effective as of March 6 as concerns the unregistered Community design.
This new industrial property right has been recognized, in particular, for those sectors of industry, which produce large number of possibly short-lived designs over short periods of time. This is true in particular for designs in the fashion industry, hence its importance for the Italian industry.
The requirements for protection relating to unregistered Community designs are the novelty and the individual character.
In particular an unregistered design shall be considered to be new if no identical design has been made available to the public before the date on which the design for which protection is claimed has first been made available to the public. Moreover an unregistered design shall have to be considered to have an individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date on which the design for which the protection is claimed has first been made available to the public.
Having considered the particularity of this right the relevant protection will last three years as from the date on which the design was first made available to the public within the Community.
The exclusive rights deriving from the unregistered design confer upon the owner the right to prevent any third party not having his consent from using it.
In particular the above-mentioned use covers the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.
Obviously the protection of such a right is subjected to some limitation. In particular the unregistered Community design shall confer on its holder the right to contest the use resulting from copying the protected design.
Moreover the contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder.
An unregistered Community design shall be declared invalid exclusively by a Community design Court on application to such a Court or on the basis of a pending counterclaim of infringement.
The authors are available further information relating to the validity and infringement of designs upon request.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.