The legal protection granted to designs in Italy and at the Community level is changing rapidly and affords new, simple and inexpensive ways to ensure protection of important assets. While businesses are spending increasing amounts of money to make products appealing to their customers, it is important to be aware of which legal tools may be used to protect such investments.
This article briefly illustrates the legal protection of designs, which may be obtained through registration at the Italian level. Further, registration of a design may also be obtained for multiple jurisdictions by means of an international registration pursuant to The Hague Agreement. Lastly, a unified protection throughout Europe is afforded by the Community design.
PROTECTION OF DESIGN AT THE ITALIAN LEVEL
PREVIOUS ITALIAN LEGISLATION AND RECENT AMENDMENTS
Italian legislation has provided protection to industrial models since 1940 in two categories: (i) utility models enhancing the efficacy or convenience of machinery or its parts, as well as (ii) ornamental designs and models.
In 1998, the European Directive 87/71/EC on the legal protection of designs was enacted to the end of approximating the design protection laws of the Member States. Italy executed the Directive by amending its national laws on designs1, while leaving untouched its regulations on the patents of utility designs.
DEFINITION OF DESIGN
Following the European Directive, Italian law defined "design" as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation.
A registerable design may consist of a component of a complex product, provided it is visible during normal use of the product and it has all requirements necessary for its protection.
REQUIREMENTS FOR PROTECTION
The design may be protected by registration if it is (a) new and (b) has an individual character. The requirement of novelty is found if no identical design has been made available to the public before the date of filing of registration or the date of priority. The design has an individual character if the overall impression it produces on an informed user differs from the overall impression produced on such user by any design which has been made available to the public before the date of filing or the date of priority. The degree of freedom of the designer in developing the design is taken into account to assess the requirement of individual character. Further, the design must not be dictated by the object’s technical function.
In order to allow designers to test their products before deciding if it is worth registering their designs, the design is not considered disclosed to the public if it is made available to the public by the designer during the 12-month period preceding the filing date of the application or the date of priority. For example, designers may present their creations at trade exhibitions or fashion shows, and subsequently decide within a year which designs to register.
The law provides that one application for registration may cover up to 100 designs, provided that they relate to products falling within the same international class. This serves the interest of industries that produce large numbers of designs having a short market life where the formalities of registration must be reduced to a minimum.
PROTECTION GRANTED: SCOPE AND TERM
The registration of a design confers to the design-holder the exclusive right to use it and to prevent any third party from using it without its consent. The registration of the design elapses after 5 years from the filing, but the design holder may obtain 5-year extensions up to a period of 25 years. The duration of the utility model, however, remains 10 years.
LIMITATIONS ON THE RIGHTS GRANTED
Rights conferred upon registration cannot be exercised in respect of:
(a) Acts done privately and for non-commercial purposes;
(b) Acts done for experimental purposes;
(c) Acts of reproduction for purposes of making citations or teaching, provided that the source is mentioned, the use complies with fair trade practice and does not unduly prejudice the normal exploitation of the design.
The principle of exhaustion of rights applies to design rights as well. In other words, the above described rights conferred by the registration of a design become exhausted when the product has been put on the market in the Community by the holder of the design rights or with his/her consent.
OTHER FORMS OF PROTECTION
The protection of a design is without prejudice to other forms of legal protection, such as copyright protection, trademark protection, patents, utility models, other distinctive signs and unfair competition.
INTERNATIONAL REGISTRATION OF DESIGNS
Italian law protects designs if they are registered with the Italian Office of Patents and Trademarks (Ufficio Italiano Brevetti e Marchi). However, Italy is a party to The Hague Agreement Concerning the International Deposits of Industrial Designs of 1925, as subsequently amended. The Agreement is a treaty administered by the World Intellectual Property Organization (WIPO), which allows an applicant to file a single application either with the Italian Office of Patents and Trademarks or with WIPO directly and to obtain international registration of the design. The design will be protected in any of the countries indicated by the applicant and subject to the local national laws.
THE COMMUNITY DESIGN
Council Regulation no. 6/2002 of December 12, 2001 on Community designs established a uniform protection of designs directly applicable in each Member State. Such Regulation has been implemented by means of a Commission Regulation and once the fees for registration have been established, the Office of Harmonisation in the Internal Market (Trade Marks and Designs), also known as "OHIM", will register Community designs.
REGISTERED AND UNREGISTERED COMMUNITY DESIGN
Regulation 6/2002 provides protection both for registered and unregistered Community designs. The requirements and rights connected to the registered Community design are almost identical to those incorporated in the European Directive 87/71/EC and already described above. It is worth noting, however, that while filing the application, the applicant may request that publication be deferred for a period of 30 months.
However, designers need not register their creations to obtain legal protection. In fact, the Regulation provides for an unregistered Community design, which is a design, having the requirements of novelty and individual character, made available to the public. The term of protection for an unregistered design is three years from the date on which the design was first made available to the public within the Community. The holder of an unregistered Community design is entitled to prevent any third party from using the design, but only if the contested use results from copying the protected design. The protection of an unregistered Community design is therefore limited to forbidding the use of a copy of the design. It does not forbid an independent creation by a designer who does not have knowledge of the prior unregistered design.
JURISDICTION ON INVALIDITY AND INFRINGEMENT
Member States shall designate in their territories a limited number of national courts and tribunals of first and second instance (Community Design Courts), which shall have exclusive jurisdiction over infringement and validity of the Community designs.
Actions and claims of infringement and validity shall be brought:
(i) In the courts of the Member State in which the defendant has his seat, domicile or an establishment;
(ii) If the defendant does not have his seat, domicile or an establishment in any of the Member States, the proceedings shall be brought in the courts of the Member State in which the plaintiff has its domicile or establishment;
(iii) If neither the defendant nor the plaintiff is so domiciled or established, the proceedings shall be brought in the courts of Spain, where the OHIM has its seat.
In any of the above cases, the Community Design Courts shall have jurisdiction in respect to acts of infringement committed or threatened within the territory of any of the Member States. This provision greatly reduces the costs and burdens of the design right holder in need of protection against Community-wide infringement. Sanctions for infringement may include orders prohibiting infringement activities, orders of seizure of the infringing products or of the manufacturing materials, as well as any other appropriate sanctions. The Community Design Courts shall apply the Regulation and, on matters not covered, their national laws.
The validity of the Community design may be challenged before a competent Community Design Court or before the OHIM. The decisions issued by the OHIM may be appealed before the OHIM’s Board of Appeal and actions against decisions of the Board of Appeal may be brought before the Court of Justice.
In conclusions, designers are now entitled to protect their creations by means of:
- Registration in Italy;
- International registration; or
- Registered or unregistered Community design.
In particular, the Community design is a new tool, which affords a single protection throughout the European Union, as well as jurisdictional advantages in the enforcement of such protection.
Royal Decree no. 1411 of August 25, 1940 was amended by means of Legislative Decree no. 95 on February 2, 2001 and subsequently by Legislative Decree no. 26 on February 2, 2002.
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.