Edited by Paola Furiosi and Francesca Caliri
Good advertising is essential for the success of a product or service offered to the public. As is easy to see, there are many examples of advertising campaigns so successful that they become the element that can capture the consumer’s attention and encourage their purchase, leading to a consequent increase in the promoting company’s profits.
The law does not reserve specific protection for advertising content: there are, in fact, no specific provisions dedicated to these, neither in the copyright law, nor in the industrial property code. If, however, jurisprudence agrees in considering such regulations applicable by analogy, for example considering that the slogan can, under certain conditions, be considered a work under copyright law or be registered as a trademark, a crucial role for the protection of slogans is, indeed, played by the Institute of Advertising Self-Regulation (in Italian, Istituto dell’Autodisciplina Pubblicitaria or “IAP”).
IAP: what it is and what it does
IAP is an association that for over 50 years has been committed to promoting a “honest, truthful and correct” commercial communication, both to prevent citizens from being exposed to deceptive or offensive messages, and to ensure that companies operate in full respect of competition rules.
To this end, a self-regulation system has been put in place for the entire advertising sector: the Institute, in fact, not only issues regulations applicable in certain contexts (such as, for example, commercial communication on social networks, or those relating to food and drink products…), but also provides for the constant updating of its own Code of Marketing Communication Self-Regulation (hereinafter the “Code of Self-Regulation”) containing – among other things – rules and penalties aimed at pursuing the aforementioned objectives of correctness and protection, which the associates undertake to comply with.
On this point, according to article 13 of the Code Self-Regulation, “any servile imitation of others’ commercial communication must be avoided, even if related to non-competing products, especially if it is likely to cause confusion with others’ commercial communication. Any exploitation of another’s name, brand, notoriety, and corporate image must also be avoided, if intended to derive an unjustified profit for oneself.“, confirming the dual objective pursued by the Institute.
A useful tool for companies
For a company to protect its creative idea, among the various services made available to IAP, the so-called “pre-emption filing” stands out, which is expressly recognized both in Article 44 of the Code Self-Regulation and in the special “Regulations for Filing Protective Notices”.
This filing allows to attest the temporal priority of a future communication campaign not yet spread among the public, preventing its exploitation by third parties who intend to promote their own products or services on the market. The protection is effective for a period of 12 months from the filing date and is renewable, once only, for a further 12 months.
To file their creative idea, it is necessary to fill out the form made available on IAP website. The object of protection can be either the mere claim advertisement (or slogan), that is, the short phrase suitable to characterize the product and facilitate its recognizability in the eyes of the consumer, either the promotional campaign itself or the spot created on the same and that will be spread through various communication channels. In these last cases, it is necessary to provide a concise but detailed description of the idea to be protected, to which any images related to the advertising campaign can also be attached.
The filing can be made in the name of the brand, the advertising agency that developed the campaign or the law firm assisting the brand in protecting its own assets IP. The only condition required, therefore, is that it is not carried out by unknown persons, although the filer can decide whether to mention the name of the product or the relative brand, which can be anonymized by replacing them with the wording “XXX” in the text of the pre-emption.
It is noted that, in any case, the database containing the creative filings is the exclusive property of IAP and is covered by copyright. Consequently, once inserted into it, the advertising content will be protected against undue reproductions, extractions and/or other forms of exploitation – even partial – of the data and the individual elements inserted therein, thus ensuring protection not limited to IAP members alone, but extended to anyone consulting the database.
The role of the law firm and its IP professionals
The support offered by a law firm specializing in intellectual property can prove crucial for a company that intends to launch its products and services on the market, as it is able to provide targeted assistance throughout the entire lifecycle of the advertising campaign. Starting from the ideation phase, in fact, IP professionals can carry out a strategic assessment about the possible risk factors of the proposed creative idea, with a view to averting, for example, the infringement of others’ industrial property rights or consumer protection regulations, as well as the implementation of conduct that does not comply with the Code of Self-Regulation.
Again, using ad hoc software, it is possible to preliminarily verify whether the claim is akin to pre-emption filings already in place. As we have seen, the law firm can then take the place of the brand at the filing stage, carrying out the required fulfillments on its behalf, as well as assisting it – extrajudicially and/or judicially – in the event of unlawful use by third parties of the content extrapolated from the database. Finally, at the time of the product’s disclosure on the market and the related promotional campaign, professionals can also advise the company about possible and additional types of protection the now widespread slogan, namely – as mentioned above – any filing as a trademark or the recognition of the same as a work protected by copyright law, if the requirements are met.
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