FOOD DESIGN IN CHINA: ACQUISITION AND ENFORCEMENT OF IPRs 22 giugno 2015 – Food Design: valore e tutela – Milano FABIO GIACOPELLO

22 giugno 2015 – Food Design: valore e tutela – Milano "Anything that walks, swims, crawls, or flies with its back to heaven is edible“

22 giugno 2015 – Food Design: valore e tutela – Milano How to protect food and its packaging in China? -Design Patent -Copyright -Trademark (3D) -Unfair Competition

22 giugno 2015 – Food Design: valore e tutela – Milano More than 1,5 million patents filed in ,398: number of Design Patents: 7,816: containing “FOOD” in the abstract 1.21% of the total

22 giugno 2015 – Food Design: valore e tutela – Milano Subjects as follows can be field as design patent in China: Food Loc.: (Bakers' products, biscuits, pastry, macaroni and other cereal products, chocolates, confectionery, ices); e.g. CN S Food packaging e.g. CN S / Loc.: (Wrapping Paper) e.g. CN S / Loc.: (Containers)

22 giugno 2015 – Food Design: valore e tutela – Milano Food (Loc.: 01-01) CN

22 giugno 2015 – Food Design: valore e tutela – Milano CN S / Loc.: (Food Container)

22 giugno 2015 – Food Design: valore e tutela – Milano CN S / Loc.: (Food Packaging Design – Wrapping Paper)

22 giugno 2015 – Food Design: valore e tutela – Milano Article 23: REQUIREMENTS -NEW; -SUBSTANTIALLY DIFFERENT; -NOT IN CONFLICT WITH ANY PRIOR RIGHT; “Any design for which patent right may be granted shall not be an existing design; nor has any entity or individual filed before the date of filing with the patent administration department under the State Council an application relating to the identical design, nor was it presented in the patent documents published after the date of filing. / The design for which a patent right may be granted shall be substantially different from a prior design or a combination of the features of prior designs. / Any design for which a patent right may be granted must not be in conflict with any prior legal rights obtained by any other person before the date of filing. The prior design referred to in this Law means any design known to the public before the filing date of the patent application in China and abroad”

22 giugno 2015 – Food Design: valore e tutela – Milano RULES FOR JUDGING THE INFRINGEMENT: Doctrine of Overall Observation and Comprehensive Judgment ( 整体观察、综合判断 ) : Identical or substantially identical from the perspective of ordinary consumer, in the overall visual effect, rather than considering the content of partial design paying attention to both differences and similarities, further consider the impact of each differences and similarities on the overall effect of a design.

22 giugno 2015 – Food Design: valore e tutela – Milano Trademark Law - Article 8 “Any sign, capable of distinguishing the goods or services of one natural person, legal person or any other organization from those of other persons, including words, devices, letters, numerals, three- dimensional signs, combination of colors, sounds, etc., as well as the combination of such signs, shall be eligible for application for registration as a trademark” Article 12: “Where a three-dimensional sign is the subject of an application for registration of a trademark, the trademark shall not be registered if it consists exclusively of the shape which results from the nature of the goods themselves, the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods”

22 giugno 2015 – Food Design: valore e tutela – Milano Trademark Law – 3D trademarks - EXAMPLES

22 giugno 2015 – Food Design: valore e tutela – Milano BARILLA in Chinese Cuoricini in Chinese + brief description Mulino Bianco in Chinese Trademark Law – Chinese trademark - EXAMPLE

22 giugno 2015 – Food Design: valore e tutela – Milano Copyright Law, Article 3: “For purposes of this Law, the term “works” includes, among other things, works of literature, art, natural sciences, social sciences, engineering and technology, which are created in any of the following forms: […] (7) graphic works such as drawings of engineering designs and product designs, maps and sketches, and model works; Recordation with Copyright Bureau is not mandatory but highly recommended in the practice (especially for enforcement).

22 giugno 2015 – Food Design: valore e tutela – Milano Unfair Competition – Art. 5.2 “Peculiar name or decoration of famous goods” “An operator may not adopt the following unfair means to carry to transactions in the market and cause damage to competitors: […] (2) using, without authorization, the name, packaging or decoration peculiar to well-known goods or using a name, packaging or decoration similar to that of well-known goods, so that his goods are confused with the well-known goods of another person, causing buyers to mistake them for the well-known goods of the other person;

22 giugno 2015 – Food Design: valore e tutela – Milano Unfair Competition – Art. 5.2 “Peculiar name or decoration of famous goods” EXAMPLE: In the Anti-Unfair Competition Law Case against Tresor Dore, the shape of the chocolate praline was recognized as “peculiar” and “well-known” to the public.

22 giugno 2015 – Food Design: valore e tutela – Milano Arance Rosse di Sicilia (IGP): Tarocco, Sanguinella e Moro Il “Tarocco di un Tarocco ”

THANKS 22 giugno 2015 – Food Design: valore e tutela – Milano FABIO GIACOPELLO