INTERNATIONAL TRADEMARK ASSOCIATION Session 2: Best Practices for Enforcing your Registered and Unregistered IP Rights: ITALY Pier Luigi Roncaglia Società Italiana Brevetti Pier Luigi Roncaglia

INTERNATIONAL TRADEMARK ASSOCIATION Product configuration can be protected Copyright Design Unregistered Design under EC Reg. 6/2000 Trademark Unfair competition (Art. 2598(1) C.C.): imitation of unregistered 3D marks (likelihood of confusion) Unfair competition (Art. 2598(2) C.C.): free ride on the reputation of a famous shape Unfair competition (Art. 2598(3) C.C.): intentional reproduction of any shape

INTERNATIONAL TRADEMARK ASSOCIATION 1. Copyright Protection a)Before 2001: Dual protection under copyright law and design law not permitted Principle of “separability” Copyright protection always denied to works of industrial design when three-dimensional Example of Cassina’s Le Corbusier “La Chaise Longue”:

INTERNATIONAL TRADEMARK ASSOCIATION 1. Copyright Protection b)After 2001: Principle of separability eliminated Concurrence between design protection and copyright protection possible for all industrial designs when they have: - “creative character” - “artistic value” 25 years after author’s death

INTERNATIONAL TRADEMARK ASSOCIATION 1. Copyright Protection what is “artistic value” and how can we determine if a work of industrial design enjoys copyright protection? ‐ High aesthetic value (ex-post recognition) ‐ Separability… again!

INTERNATIONAL TRADEMARK ASSOCIATION YES or NO? 1. Copyright Protection

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection a)Historical remarks Historical relationship between trademark / unfair competition (Art. 2598(1) C.C.) protection and design protection: Historical relationship between trademark / unfair competition (Art. 2598(1) C.C.) protection and design protection: ‐ if a shape was protectable as a design, it could not afford protection as a trademark and, in principle, under unfair competition (Art. 2598(1) C.C.) law ‐ Need to have any shape protectable as a design to eventually fall in the public domain and be freely imitable ‐ A shape was protectable as a design when it reached the aesthetic threshold of “special ornament”

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection Special ornament = some scholars and most case-law: a not clearly identified aesthetic degree and a large margin for subjective evaluation remained

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection Frequent case-law outcome - to afford design protection, shapes had to have a high “aesthetic” degree -shapes with any slight aesthetic degree were denied trademark or unfair competition (Art. 2598(1) C.C.) protection even if they had distinctive character = most shapes afforded no protection

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection To improve this situation /1 Scholars’ leading position: Alternative trademark/unfair competition (Art. 2598(1) C.C.) protection and design protection strictly maintained but “special ornament” interpreted as shape’s ability to be “the” purchasing factor (or at least “a relevant” purchasing factor). The threshold of “special ornament” is reached when if the shape determines (or significantly influences) the consumer’s purchasing decision.

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection To improve this situation /2 Supreme Court: theory of “innocent variations” Shapes protectable as designs could not be protected as trademarks but when variations to shapes that were also distinctive existed which would not affect their aesthetic functionality but would avoid a risk of confusion as to the source, their imitation without variation was sanctioned as an act of unfair competition (Art. 2598(1) C.C.)

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection Burberry Check and the Supreme Court decision of : Burberry Check is aesthetically functional so its trademark registration is invalid, but, since it is clearly distinctive, its slavish imitation constitutes and act of unfair competition

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection b)Present situation (as of 2001) cumulation of design protection with trademark protection and protection under unfair competition (Art. 2598(1) C.C.) is now possible in certain cases because the prerequisite of design protection (“individual character”) no longer has any aesthetic connotation

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection if a shape has only individual character:  design (registered or unregistered) protection only If a shape has also distinctive character (most likely acquired through use) but does not give “substantial value” to the goods:  design, trademark and unfair competition (Art. 2598(1) C.C.) protection If a shape gives “substantial value” to the goods:  design protection: yes; trademark protection: no; unfair competition (Art. 2598(1) C.C.): ?

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection In Italy: - “substantial value” = old “special ornament” as interpreted by leading scholars In the E.U.: - surprisingly no attention - emphasis on distinctiveness through public’s perception

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection Recent trends of case-law in Italy : Three-dimensional elements that do not constitute the whole product configuration: Relatively easy to protect as trademarks and under unfair competition (Art. 2598(1) C.C.) assuming they are perceived as source indicators

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection Recent trends of case-law in Italy: whole product configurations: Difficult to protect as trademarks (especially in the field of luxury goods) but even more openness to protect them as an act of unfair competition (Art. 2598(1) C.C.) under the “innocent variations” theory

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection Originally: claiming as own positive and specific qualities of a competitor’s product or business Subsequently: taking a free ride on the reputation of a competitor or its products Presently: imitating famous shapes of a competitor even when avoiding a likelihood of confusion Protection against parasitism prevails over the traditional need to have famous shapes fall in the public domain Protection under unfair competition under Art. 2598(2) C.C.

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection example of Hermès Sellier et al. v. Sirena S.r.l. vs.

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection example of Cartier International B.V. et al. v. Pryngeps Gallery S.p.A. vs.

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection Court of Milan, July 17, 2006 (Hermès case) and September 8, 2006 (Cartier case) “The slavish imitation of the well-known shape of a product, carried out with the clear aim to take unfair advantage of the positive market goodwill of the famous product so as to transfer to the the less expensive product the results of the reputation of the competitor’s product amounts to unfair competition ex Art. 2598(2) C.C.” (irrespective of any likelihood of confusion as to the origin of the respective goods)

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection Unregistered designs More frequently invoked but still with uncertainties on: What constitutes sufficient disclosure Burden of proving individual character Burden of proving that the copy is intentional

INTERNATIONAL TRADEMARK ASSOCIATION 2. Design, trademark and unfair competition protection Unfair competition ex Art. 2598(3) C.C. Any act contrary to honest business practices capable of harming a competitor, among which: (traditionally) Pantograph or cast reproductions (more recently) intentional reproduction of identical shapes (or designs) (not otherwise protectable) as a free ride on a competitor’s R&D investments

INTERNATIONAL TRADEMARK ASSOCIATION 3. Copyrights, registered designs and trademarks Let’s not forget Criminal remedies

INTERNATIONAL TRADEMARK ASSOCIATION ITALY THANK YOU! Pier Luigi Roncaglia Società Italiana Brevetti