The systems adopted until now in the various legislations to protect designs and models can in practice be summarized as three fundamental types. The first system is similar to copyright (the so-called copyright approach) and considers the design and model as a work of the intellect, comparable in many ways to works of art. In this system protection is conditional on the presence of a creative level which, being subject to a subjective judgement, is difficult to evaluate homogeneously: moreover, it is difficult, with this system, to coordinate general protection of copyright and the specific protection of the design and model. This coordination is dealt with in various ways in different legislations; some (see the French system) extend to all designs and models the protection of copyright, whereas others (see the German system) qualify designs and models as “little works of the intellect”, therefore containing a lesser level of creativity. The second system, the one adopted by current legislation in Italy, connects the discipline of designs and models to the rights of a patent of invention (patent approach) and protection is conditional on requirements such as novelty and originality. In this system the difference between designs, models and works of the intellect is not defined by a quantitative criterion (that is, by the level of creativity), but by a qualitative criterion which the Italian system has characterized with the principle that the artistic value can be separated from the industrial value. This system also poses problems, both with regard to evaluating the requirement of originality and also the application of the criterion of separation. The norm embodied in the IPC creates a system of protection for designs and models which adopts a pragmatic criterion, the so-called “market approach”. This is connected to the perception of the aesthetic impact on informed users (hence, not average consumers) and subordinates the protection of form to the presence of external characteristics connected with the appearance of a product, able to contribute to the commercial success of the product.
To obtain the registration of an industrial design or model, it must be “new” and it must possess an “individual” character. Since 2001, the specific nature of the “special ornament” as in the previous law has thus been eliminated, as has the formulation of “patent”, replaced by “registered”. It is also possible to accumulate further protections such as copyright, trademark, patent for utility model and, in a certain way, a veto on unfair competition for servile imitation.
The design or model protects the appearance of a product, or a part of it, as the result of the characteristics of line, profiles, colours, shape, surface structure, and/or the materials which make up the product itself and/or its ornamentation, and also comprises the possibility of protecting colours or lines which, although they do not concern the form of the product, can in any case characterize it. The definition of product says that it can be of artisan or industrial origin, and comprises both finished products and also products, or rather components, which have to be assembled (spare parts in particular) to form a complex product. Protection is given to the product or component provided it is visible during normal use, and extends to any design or model that produces in the informed user the same general impression. This definition, not containing any reference to the aesthetic characteristics of the resulting product, means that the product is not protected for the intrinsic characteristics of pleasantness, but because the product containing the design and/or model, or being determined thereby, has one of the possible configurations wherein it can be embodied.
The concept of “novelty” provides that, at the date when application for registration is filed, the design or model must be different from any other design or model previously disclosed, and this difference must not be limited to details of little importance or irrelevant. These previous designs or models may be present everywhere in the world; this condition is mitigated, however, because the destructive prior art must be reasonably well-known in the specialized environment of the field concerned, and operating in the community during normal commercial activity. This means that it is not possible to find prior art in experiences already forgotten, or so sophisticated that they are known to a small and select group of specialists. With regard to the requirement of novelty, there is an exception to the general rule when it is established that a disclosure of the design, occurring in the twelve months preceding the filing date of the application, does not preclude the possibility of a subsequent valid filing by those who have the right to do so. This exception serves to allow those having the right to test the reactions of the market and to evaluate which products, among those marketed, it is worth protecting. This exception obviously has some risks, which are not of secondary importance, when it is desired to exploit this exception both with regard to unfair competition, and also with regard to a possible extension of the right to countries where the legislation does not lay down that prior disclosure is in all cases a destructive factor.
The norm requires a further element, which is the “individual character” present when the impression that a design or model gives to the informed user differs from the general impression which a design or model previously disclosed gives said user. To identify the informed user entails a judgement which must not be too rigorous and restrictive, since it is obvious that, for a person with an average knowledge of a particular field, even differences that are perhaps not significant can be sufficient to attribute individual character to a design or model.
To evaluate individual character, we must take into account the crowding which possibly exists in the specific field of the product. Therefore, where there is a crowded sector, the degree of difference needed depends on the limited possibility of significant variations, so that even a slight variation may be sufficient in order for novelty or individual character to be recognized. Clearly, in a crowded sector, the degree of difference in the product of a third competitor, put on the market after the application for registration has been filed, can be sufficient so as not to create interference with the registered design or model.
Having eliminated the requirement of the “special ornament” has reduced the level of originality required and made the system of designs and models able to be adopted by an ever-growing number of forms; this reduces the importance and use of protection by means of the veto given by the system of unfair competition through servile imitation.
The characteristics of the norm on designs or models are such as to facilitate and make uniform the judgement on the likelihood of their being confused, and hence of interference with the title thus obtained. This is in favour of those Companies which develop their own products, through study and research, and will penalize those Companies which live parasitically in the wake of the former.
The new norm has in practice reduced the field of protection laid down by Art. 2598 CC, so that servile imitation is now protected only when the imitation is really servile or slavish.
The legislation has modified the text of article 2 of the Copyright Law and abrogated the disposition of the old Law on Models which forbade the accumulation of the protection of patent with the protection of copyright.
In article 1, the Copyright Law defines in general what works are protected; in article 2 it specifies them and in point 10 of article 2 it says:
“In particular including:
10) works of industrial design that in themselves have a creative character and an artistic value.”
Furthermore, together with the application to register a design or model, or in any case before it is granted, it is better to verify, in order to obtain protection of said design or model based on copyright, whether it is necessary to report it to the competent Office.
Models and designs last 5 years from the filing date, renewable several times for 5 years to a maximum of 25 years. Fees must be paid every 5 years in order to keep the right valid. With regard to the creation of models and designs by an employee, the same norms apply as those for patents of industrial invention. For registration and protection of rights, the same norms apply as those for inventions. With a single application to register a multiple model and design it is possible to protect an unlimited number of objects provided that they belong to the same category of products as identified in the appropriate international classification. The content of an application to register a model or design is public from the filing date; however, publication can be delayed up to 30 months. The application can be extended State by State and by the unified procedure of the International Design or the Community Design (restricted to the contracting States).
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