Most recent developments in Italian protection of design and shape trademarks
Contrary to common belief, the Italian legislative instruments against IP infringement are quite efficient: in 2003 specialised IP divisions were set up in 12 existing courts, and in September 2012 this was increased to 21. Moreover, since 2014 cases involving foreign companies have been concentrated in nine of these courts (Milan, Turin, Venice, Genoa, Rome, Naples, Bari, Cagliari and Catania). These divisions have exclusive competence to decide civil actions relating to trademarks, patents, copyright and unfair competition.
The high level of efficiency of the civil courts is due in part to their keenness to:
- grant urgent measures (eg, injunctions, seizures and orders for the withdrawal of goods from the market); and
- order the judicial investigation of evidence (eg, description orders, normally granted ex parte).
The accounts of the alleged infringer are often seized, which facilitates the calculation of any compensation to be paid. Following the implementation of the EU IP Rights Enforcement Directive, the rights holder may receive a sum which corresponds to either the infringer’s profits or the rights holder’s lost profits, whichever is the greater. Compensation for any further damage, such as expenses incurred for responding to the infringement or damage to image, may also be added to the amount. Compensation for damage caused to the rights holder’s image is often calculated as a fraction of the advertising expenses incurred by the rights holder or the cost of an advertising campaign to mitigate the negative impact of the infringement on the public. Relevant damages are often awarded (eg, on January 31 2013 the Court of Brescia awarded € 2 million damages for trade secret violations).
Also from a substantive perspective, IP protection is rigorous. In particular, design works may be protected through a wide range of legal instruments: copyright, registered and unregistered design, registered and unregistered shape trademarks.
The 2005 Code of Industrial Property, extensively amended in 2010, brought together the principal laws relating to IP matters (apart from copyright, which is still regulated by a separate law), expressly including unregistered trademarks, which were already protected under Italian law, but can now benefit from the special procedural rules provided for all IP rights.
Design protection through copyright law has been available since the implementation of the EU Community Design Directive (98/71/EC). However we must consider that under Italian law the copyright protection of the shape of products requires also an «artistic value» of the same and therefore is acknowledged only for design masterpieces, like the famous Arco lamp (see Court of Milan, order 29 December 2006, later upheld with order 22 January 2007). In examining whether the shape of the Arco lamp may be protected by copyright for works of design the Court of Milan IP Specialized Division held that «in assessing the artistic value of the work its consolidated perception in society and, in particular, in the cultural environment in general needs to be highlighted as objectively as possible». The same criterion was invoked also in further decisions and can now be considered well established case law.
On January 27 2011 the ECJ (C-168/09) stressed that this protection also applies to works created before the date of implementation of the EU Design Directive (71/98/EC). This is now expressly stated in Article 239 of the Code of Industrial Property (as amended in 2010), which states that all copied products manufactured in Italy after April 19 2006 (and those imported after April 19 2001) are pursuable as counterfeit. In 2012 a deadline of April 19 2014 for selling off stocks of infringing products was granted, but this was overruled by the Court of Milan (April 28 2011 and February 2 2015), as it was deemed contrary to the directive. The Court of Milan ruled on this issue in two cases: one protecting Cassina’s copyright on chairs designed by Le Corbusier (July 20 2012); the other protecting Flou’s copyright on the ‘Nathalie’ bed designed by Magistretti (September 14 to 27 2011 and June 5 2012).
As the different ways of protecting the shapes of product are strictly linked one to the other, many decisions have been rendered in the Italian case law, concerning the coordination thereof. In this perspective particularly significant is the order issued by the Court of Turin IP Specialized Division on 20 March 2008 concerning the external shape of the «Smart» car. In this case the protection was granted both as a registered model and as a shape trademark, with different scopes of protection. In fact the protection against one of the assumed infringing car was granted on both sides, while a further car was held to amount only to unregistered trademark infringement, while the claim based on the model was dismissed.
A further decision, rendered by the Court of Milan IP Specialized Division on 17 January 2006 is worth commenting on in the same perspective, as it protected the shape of a well-known screwpull as an unregistered trademark. In this case the Court ruled that the shape of a product, registered neither as a mark nor as a design, could be protected, essentially due to its repute which led the consumers concerned to perceive it as a symbol of the manufacturer. Actually distinctive character and individual character may be placed on a par since they are both based on the perception of the public, but they protect two different functions of the product shape: individual character concerns the shape ‘per se’, while distinctive character ‘the other from self’ of a shape i.e. the other possible messages and suggestions which are communicated by the shape, usually as a result of use.
The central importance of the perception of the relevant public in determining both the validity and the scope of protection which shapes can enjoy has also made further inroads in case law. In this perspective two recent rulings issued by the Court of Brescia IP Specialized Division (rulings of September 19 2014 and November 24 2014) may be quoted, which dismissed requests for an interim injunction and seizure order against a well-known Italian tap manufacturer, even if the registered design to be protected and the assumed infringing products were really very similar in their most relevant features. However these features were also common to many earlier products and models and the sector was actually very busy. Therefore the Court considered the model valid, due to the limited freedom of the designer, but limited its scope of protection to the specific relevant features which the informed user could perceive as really new, in comparison with the previous products. And since these features were not present in the assumed infringing product, the infringement claim was rejected.
In design cases the burden of proof issue may be somehow misleading. Actually, under Italian law a registered design is presumed to be valid, unless the opponent collects evidence that it does not meet the prerequisites set forth by the law to be protected. We can therefore say that the burden of proving the nullity is up to the opponent. However this burden just concerns the existence of previous models or products. Instead, the evaluation of the same it is the task of the Court. Likewise, in assessing the infringement, the design registration owner has just to proof the existence of his/her right and that of the infringing product and that is manufactured or marketed in Italy, while the assessment of infringement is upon the Court.
Of course the situation is different for the protection of unregistered Community design, that is conditional upon the fact that the holder of the model had made mention in its petition of the aspects of the product which gave it its individual character and had supplied evidence of divulgation within the EU as required by EC Regulation 2002/6 (see Court of Bologna IP Specialised Division, 8 September 2005, which granted the requested protection since the comparison of the samples of the original product and that of the alleged infringer demonstrated such a level of similarity in the individual nature of the models as to render creative coincidence improbable).