The virtuous circle of innovation: other forms of protection

Introduction

Summary

With reference to the Italian legislationdesign concerns the appearance of a product or part of it. This appearance may derive from the characteristics of the lines, contours, colours, shape, surface texture and/or materials of the product and/or its ornament. When we speak of a product, we mean any industrial or craft object. This definition also includes components that must be assembled to form a complex product, packaging, presentations, graphic symbols and typefaces.
Computer programs are excluded from the definition of product, within the scope of design. With reference to Italian legislation, it is possible to file a multiple application requesting protection for several designs provided that they fall within a single class of the international classification referred to in the 1968 Locarno Agreement. Italian legislation also allows under certain conditions the possibility of cumulating several protections, both with reference to copyright and utility model protection.

Registration requirements in Italy

To be validly registered, a design must be new and have individual character. A design is new if no identical design has been disclosed prior to the date of filing of the application or, if priority is claimed, prior to the date of the application. 
To assess theidentity the characteristics of a design must be compared with each design disclosed earlier. The two designs are considered identical if their features differ only in irrelevant details.
A design has character individual if the overall impression created in the informed user differs from the overall impression created in that user by any design that has been disclosed before the date of filing of the application for registration or, if priority is claimed, before the date of the application for registration. In ascertaining individual character, consideration shall be given to the degree of freedom enjoyed by the designer in realising the design.
For the purposes of assessing novelty and individual character, any disclosure made by the applicant himself in the 12 months preceding the filing of the application shall be disregarded. Furthermore, disclosures are relevant if they are such as to make the design reasonably well known in the specialised circles of the sector concerned, operating in the Community, in the normal course of business.

Duration

Registration for designs is granted, in Italy, for 5 years from the date of filing of the application, but the duration of protection may be extended for successive five-year periods up to a maximum of 25 years from the submission of the application for registration. 

The protection offered by registered design

The registration of a design confers on the holder the exclusive right to use it and to prohibit third parties from using it without his consent. Acts of use include in particular the making, offering, marketing, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or the stocking of such a product for those purposes. 

The exclusive rights conferred by a design registration extend to any design that does not produce on the informed user a different overall impression. In determining the scope of protection, account shall be taken of the freedom of the designer in realising the design.

Registration procedures abroad

Many states recognise and protect designs. However, the various legislations may differ substantially from one another. EC Regulation No. 6/2002 introduced the so-called design or community design.
With a single deposit at theEUIPO (European Union Intellectual Property Office) of Alicante (Spain) it is possible to register a design that has effect in all the countries of the European Union.
Italian law and the Community Design Regulations provide for very similar protection extended to the territory of Italy and the territory of the European Union respectively.
The Community design must also be new and have individual character to be registered and, like the Italian registration, has a duration of 5 years from the date of filing of the application, extendable up to a maximum of 25 years.
Starting with an application for registration in Italy and/or as a Community design, it is possible to extend protection abroad within 6 months from the date of first filing by taking advantage of the priority claim.
Each state has specific formal and substantive requirements that also differ widely. For instance, only a few foreign states offer the possibility of a multiple application and, if it is provided for, the conditions may vary significantly from state to state. To access guardianship abroad it is also possible to go through the international registration according to which it is possible to file a single application with the O.M.P.I. in Geneva designating the Contracting States of interest in which to obtain the same protection as if the design had been filed directly in each individual State. It is possible to designate the European Union as part of an international registration.

Unregistered Community Design

Designs are protectable in the European Union unregistered Community. No administrative formalities are necessary and they must meet the same requirements as registered Community Designs. In this case, the period of protection is limited to three years from the date of first disclosure. In this case, protection is also limited to infringement resulting from copying.

Copyright

What is protectable by copyright?
So-called 'intellectual works' of a creative nature belonging to literature, music, figurative arts, architecture, industrial design, theatre and cinematography, whatever their mode or form of expression, are protected by copyright law.
Deposit and registration of intellectual works
The deposit and registration of intellectual works are not acts constituting copyright since the original title of the acquisition of copyright is determined by the creation of the work. However, registration with the competent Offices and/or Authorities constitutes proof of the authorship of the work and, possibly, of its publication.
Design protection
In addition to the possibility of protecting the appearance of a product by registering a design or model, in some cases in Italy it is possible to access protection through the Copyright Law. In this case, rights of economic use last for the author's entire life and until the end of the 70th calendar year after his death or after the death of the last of the co-authors.
Software protection
Software is protected under the copyright law as a literary work. Protection extends to any software in any form as long as it is original. Excluded from the protection granted by the Copyright Act are the ideas and principles underlying any element of a piece of software, including those underlying its interfaces. Protection of software arises automatically with its creation but it may be advantageous to fix a date with certainty, for example, by registering with the public register for software established at the SIAE.

Intellectual Property

The term intellectual property refers to rights aimed at protecting creative activity, such as trade marks, patents for industrial inventions or utility models, copyright and design. Intellectual property thus encompasses both industrial law and copyright.

Each right plays an important role, but what is most important is the synergetic use of finite-life rights, mainly patents and designs, and theoretically infinite-life rights, such as trademarks, which creates a sort of self-sustaining innovation flywheel and is viewed very favourably by possible investors.

Bibliographic and web references

Bibliography

  • Galli, Gambino (ed.), Commented Code of Industrial and Intellectual Property (Utet Giuridica, 2011)
  • Ubertazzi, Commentario breve alle leggi su proprietà intellettuale e concorrenza (ed. CEDAM, 2019)
  • Vanzetti, Di Cataldo, Handbook of Industrial Law (ed. Giuffrè, 2018)
  • Vanzetti (ed.), Industrial Property Code (ed. Giuffrè, 2013)

Sitography

italiacamerun Aedic association

A.E.D.I.C.
Cameroon - Yaounde
Italy - Gorizia

en_GBEnglish (UK)