Prepared by Paola Furiosi and Sara Renon
Design, an Attempt to Definition
The Milan Design Week that has just ended is a useful opportunity to clarify the legal protection of design. During these seven days, the various and innovative installations hosted in every corner of the city, throughout the Salone Internazionale del Mobile and the Fuorisalone, have allowed professionals (and others) to immerse themselves in and be fascinated by a world made of a balance between utility and beauty: a world that deserves to be well protected from a legal point of view.
Prodromic to the examination of the current legal protection of design is, without doubt, its definition. Design, in fact, surrounds us and with its transversality is present – even if we are not always aware of it – in our everyday gestures, in the objects we use every day, such as a car or a tap, a lamp or a chair, which in this week have appeared to us in a new aesthetic dimension, sometimes almost eccentric, but always surprising. Yet even though design is everywhere around us, it is not easy to give it an appropriate definition.
In this sense, we are supported by the Italian Code of Industrial Property (Legislative Decree No. 30/2005, hereinafter “IPC”) which, in Article 31, defines design as “the appearance of the whole or a part of the product, resulting in particular from the features of the lines, contours, colours, shape, texture or materials of the product or its ornamentation”.
“Design” is, in truth, a commonly used term referring to both two-dimensional and three-dimensional works. The legislator, on the other hand, makes a distinction between drawings, i.e. two-dimensional decorations and characters, and models, i.e. three-dimensional aspects of products. Overall, however, one can refer to design in both cases.
Design has an inestimable value for companies and professionals in every industry, from furniture to automotive, fashion, communication and so on. Just think that from the end of 2020, the export of made in Italy design has experienced an important growth, with extraordinary results in terms of orders and revenues. The furniture and lighting sectors, to remain in the path of the Fuorisalone in Milan, reached a turnover of over 25 billion in 2021, half of which is attributable to the domestic market.
It follows that it is undoubtedly important for an operator in the sector, from the designer who wants to protect his own creative work, to the company that needs to protect and launch one of its innovations on the market, to know the protection offered by the law to design works. Let us see, therefore, what this protection consists of.
How to Protect Design
Registered (and not) Design
Pursuant to the IPC the design protection is subject to its registration. Registration can be obtained by filing an application before the competent offices (UIBM, at national level; EUIPO, at European level). Registration has a duration of 5 years, renewable up to a maximum of 25 years in total and gives the holder the exclusive right to use the design and to prohibit third parties from using it without his consent.
It should be noted that European Union Law (EC Regulation No. 6/2002) also offers temporary protection (lasting 3 years, with no possibility of renewal) to designs that have not been registered but fulfil the requirements for registration. This protection starts from the date of their first disclosure to the public, which occurs in cases of publication, exhibition, use in commerce of the product or in any case of use of the product in such a way as to make it reasonably known in the specialised circles of the relevant sector.
However, with the purpose to fight unlawful practices of infringement of one’s own design, it is certainly recommended for the sector operator to register it. The protection conferred by a non-registered design is, in fact, certainly weaker than the protection guaranteed by a registered title: a design registration certificate allows the owner to be relieved of the burden of proving the validity of the registered design, it will be up to the opposing party to prove its invalidity; moreover, it provides a fixed date from which protection against third parties starts. In contrast, in the absence of registration, the design owner bears the difficult burden of proof of the design’s validity as well as of the date and place of its first disclosure.
Considering the above, it is clear that the first fundamental step for design protection is to register it, after having verified the existence of all requirements for registrability. In particular, the design must be:
- new, not identical to another previously disclosed design,
- lawful, meaning in accordance with public order and morality, and
- having individual character, i.e. such that the general impression it creates in the informed user differs from the general impression created in that user by any design that has previously been disclosed.
Copyright protection
Design also enjoys protection under the Italian Copyright Law (Law no. 633/1941, hereinafter “ICL”), which in Article 2 includes among the protected works “industrial design works having per se creative character and artistic value”. It is not an alternative protection to that offered by design registration, but a protection that can be cumulated with it.
The rights conferred by the ICL arise automatically at the time of the creation of the work, without the need for any formality and, in particular, any registration. These rights are divided into (i) patrimonial rights, i.e. rights to the economic exploitation of the work, which extend up to 70 years after the author’s death and are assignable and renounceable; and (ii) moral rights (in particular, inter alia, the right to claim paternity of the work and the integrity of the work itself), which are inalienable, non-renounceable and perpetual.
Undoubtedly, design protection under ICL can be an additional legislative measure available to the design owner, especially in the case of non-registration. At the same time, however, it must be taken into consideration that not all industrial designs can be qualified as “intellectual works”. In fact, the ICL makes its protection subject to two requirements: creative character and artistic value.
Case law considers the requirement of creative character coincident with the requirement of creativity required by art. 1 of the ICL for the authorial protection of any work; this requirement is not to be understood as implying an absolute novelty of the work, but as an expression of the personality of the author and his creativity.
Artistic value, on the other hand, is a quid pluris required only for design protection and whose existence must be assessed by the court on a case-by-case basis. It has been held by national jurisprudence that such a requirement exists where there is a strong innovativeness in the design work, such that, for a designer in the sector, it may be considered a new and different paradigm. The artistic value of works of industrial design must result in a more marked originality of forms compared to those normally found in similar products on the market, the artistic value has to take precedence over the practical utility of the work, which must also be evaluated in the light of collective recognition, especially in artistic circles.
With regard to the latter requirement, it should however be borne in mind that, with the well-known ruling of 12 September 2019 in Case C-683/17 (Cofemel-Sociedade de Vestuario, SA v. G-Star Raw CV), the European Court of Justice (CJEU) seems to have taken a less restrictive position than the national legislator with reference to the authorial protection of design works, stating that also for the latter the only requirements for protection are creativity and the fact that such creativity is embodied in a quid endowed with expressive and identifiable value, that is, precisely in a work. In this way, the threshold for access to protection under the ICL would be significantly lowered, since it would not be necessary to ascertain an aesthetic gradient and a marked and out-of-the-ordinary originality (i.e. the existence of artistic value).
Therefore, design works can benefit from the additional protection guaranteed by the ICL, and, due to the recent pronouncement of the CJEU, this protection seems to be accessible to an increasing number of industrial design works.
Judicial Protection in Case of Design Infringement
First of all, the holder of an infringed design can bring an ordinary infringement action before the specialised sections of the competent courts. Design infringement proceedings may require particularly long-time frames, which may cause serious and irreparable damage to the owner of the infringed right. This often makes it necessary to resort to the precautionary measures that the IPC makes available for a faster and more immediate protection of rights: preventive technical advice, description, seizure and injunction.
The purpose of the description (Art. 129 IPC) is to pre-establish proof of the infringement of the right by means of access to the premises where the counterfeiting is taking place by the judicial officer, who, with the assistance of experts and possibly with the help of technicians appointed by the parties, prepares a report containing a detailed description of the products deemed to be counterfeited. Normally, proof of infringement can be provided by the party by producing in court a sample of the product directly purchased on the market, while the description is a residual measure to be used especially in the case of products that are not yet on sale.
Seizure (Art. 129 IPC), on the other hand, has a probative and precautionary function and makes it possible to obtain that a product made in infringement may not circulate, entrusting its custody to a person who may use it only by order of the judge.
Finally, the injunction (Art. 131 IPC) allows obtaining the paralysis of an activity that constitutes infringement of another person’s IP right.
Article 128 IPC also admits, in industrial property proceedings, recourse to the preventive technical consultancy (PTC), governed by Article 696-bis of the Italian Code of Civil Procedure, to which the IPC makes direct reference: recourse to this procedure will therefore be possible only within the limits identified by the Italian Code of Civil Procedure and, therefore, when claims arising from the non-execution or inexact execution of contractual obligations or from an illegal act are to be ascertained and determined. Therefore, claims aimed at verifying the nullity of the patent and/or in any event its validity and/or extension cannot be the subject of a PTC.
Such measures may be requested both in the course of an action on the merits and before its initiation. Precautionary measures capable of anticipating the effects of the judgement on the merits maintain their effectiveness even when a judgement on the merits is not subsequently instituted; this applies to the injunction and also for the seizure, while preventive technical consultancy and the description necessarily require the instituting of a judgement on the merits. The adoption of a precautionary measure requires a merely summary evaluation by the judge as to the existence of the plaintiff’s right (fumus boni iuris) and of a danger inherent in the delay of protection (periculum in mora). Moreover, their grant may be conditional on the payment of a deposit by the plaintiff.
Therefore, we can conclude by arguing that the Italian legal system offers valid protection measures to the design operator, who must, in turn, take all necessary steps to protect his creations: proceed with the registration of his design in order to have a valid title enforceable against third parties; actually use his design and gather evidence of its actual and effective use (e.g., catalogues in which his products are listed or reviewed, brochures, photographs of exhibitions and displays of his products); react promptly to violations by instituting precautionary proceedings; find adequate evidence of infringement (e.g., by obtaining a sample of the infringing product).
The sector operator will then have to avail himself of the services and advice of specialised professionals who can offer 360° protection of his design, thanks to a network capable of providing services in an integrated and multi-disciplinary manner. It will be necessary, the assistance of an advisor who will be responsible for the registration of the design, the maintenance of the relative registration and the monitoring of possible registrations in violation of the registered design. Appropriate legal assistance – provided by professionals experienced in intellectual property – for drafting and negotiating contracts for the economic exploitation and protection of the design, as well as for the management of any legal actions that may be necessary, will also be essential. Forensic services are also particularly useful, both in the start-up phase of design protection and in the event of any disputes, especially in case of PCT. Finally, design protection must include monitoring online (and, nowadays, also in the metaverse) any counterfeits, in the presence of which it will be necessary to immediately proceed with notice and take down activities.
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