Not all Italian courts take the same approach towards the lookalike phenomenon or trade dress in general
Published article on WTR (n.38 August-September 2012)
The overall appearance of a product or its packaging is protected by the tools enforceable in accordance with statutory law and court decisions. Apart from threedimensional (3D) trademarks which afford potentially infinite protection – provided that strict requirements are met – designs and trade dress, among others, are generally known by trademark owners and practitioners as the best way to protect the appearance of their products.
The main change to the concept of design protection provided by statutory law was enacted by Decree-Law 95/2001. This particular statute implemented the EU Design Protection Directive (98/71/EC) and came into force in compliance with EU Rule 6/2006. In particular, Decree 95/2011 removed the ‘special ornament’ requirement from previous legislation, which significantly broadened the scope of protection for packaging.
Pursuant to Article 31 of the Code of Industrial Property, “registration as designs and models may be granted to the appearance of the products, whole or partial, resulting, in particular, from the features of the lines, frames, shape, textile or material of the products itself, or of its ornamental character, provided that the same are novel and have individual character”. As a result, ‘novelty’ and ‘individual character’ remain requisite to the protection of designs through the Italian Patent and Trademark Office, where ‘individual character’ means a design which differs from any other previously published design according to informed consumers.
‘Special ornamental character’ is now no longer required.
Consequently, the distinctive character of designs need not be linked to the nature of the product and, as such, it should be based on the informed consumer’s impression, thereby making it unique.
These informed consumers – representatives of companies who participate regularly in trade fairs and have daily experience in design – are understood to have high design expertise. This implies that in common practice there is more scope for infringers to overcome the allegations of counterfeiting.
In this regard, another peculiar aspect concerning Italian designs is that the courts have ruled that in order to assess when design infringement occurs, products shall be compared merely from a visual point of view, while aural and conceptual aspects shall be disregarded.
As for the novelty requirement (Articles 32 and 34 of the code), there is no design protection in cases where the design has already been disclosed. Therefore, there is no novelty when a design has been published or shown – for example, in a sale or exhibition, by a third party before the filing date (or priority) or by the owner.
Disclosure may consist of publication of the design application by the company or any event that makes the design potentially known to an unknown number of third parties.
However, there is no disclosure where the design has been published by the same party within 12 months before the application was filed (the grace period). Moreover, there is no disclosure if a design could not reasonably be recognised by specialists in the sector concerned operating within the European Union.
Provided that the aforementioned requirements are in place, products that can validly obtain design protection in Italy consist of any industrial or handicraft product, including components (that must be assembled to form a complex product), packaging, presentations, font and graphic symbols, but excluding computer programs (Article 31).
The registration of a design in Italy confers on the holder the right to ban the reproduction of an equivalent design – one that gives the same general impression. As for the length of protection, unlike trademark protection which is potentially infinite, Italian design registration protection lasts for a maximum of 25 years.
Pursuant to Article 35, designs applied or incorporated as a component of a complex product may obtain registration if the component part, once incorporated into the complex product, remains visible during normal use – excluding maintenance, servicing and repair – and if the visible features of the component fulfil in part the requirements of novelty and individual character. Such products must remain visible to the final consumer (ie, the person that the manufacturer assumes to be the final user of the product).
Design protection is often applied to products and their packaging combining both functional and ornamental character.
For this reason legislation has clearly forbidden design registration of all external characteristics of a product of a solely technical function.
The implementing regulation of the Italian statutory law (enacted on January 13 2010) highlights the difference between Italian law and the EU Community Design Regulation (6/2002) on the same issue.
Pursuant to Article 36.6 of the regulation, any explanation relating to Community designs for which registration is sought “shall not affect the scope of protection for the design as such”. Thus, Italian courts have ruled that designs and models consist of their graphic or photographic representation (ie, solely on their visual aspects).
However, in recent years, the most discussed topic in Italy relating to designs has been the developments of copyright protection for works of industrial design (Article 239).
On February 15 2012 the Senate approved the proposed amendment to the classic design provisions of Decreto Milleproroghe (December 29 2011). Such statutory law rewrites Article 239, which deals with copyright protection for works of classic design. The proposed amendment aimed to obtain an extension of the moratorium period for companies producing copies of classic designs protected by copyright (Flos (C-168/09), which is currently five years from April 19 2001. The amendment – which proposed a moratorium period of 15 years (until 2016) – was approved in a modified form by the Senate and reduced the grace period to 13 years (until 2014).
Trade dress (or its substantial equivalent)
Statutory law provides no particular definition of ‘trade dress’, but its protection overlaps 3D trademarks, designs, copyrights and unfair competition law. Which tool applies depends on the prerequisites and scope of protection.
Theoretically, there is no bar to obtaining protection through all of the tools provided by the law; therefore, enforcing 3D trademarks comes first – due to the infinite duration of the protection – followed by design, copyrights (as titled rights) and unfair competition with its residual protection.
In Italy there are multiple tools to protect trade dress, as trade dress comprises a mixture of features relating to the packaging and appearance of products.
Although such features may be considered as mainly decorative and ornamental, consumers may recall a specific product and recognise the features as identifying the product’s source.
Counterfeiters are sophisticated enough to find loopholes to overcome the enforcement of trademark and design law, so the residual rule of law of unfair competition provides an important tool.
Nonetheless, over the years, the Italian courts have developed a certain sensitivity towards the function of product packaging as distinctive and attractive, considering that a consumer’s perception of the distinctiveness or attractiveness of a product and its packaging is even more immediate than the perception of the mark itself.
In this regard, some Italian courts have given value to the appearance of lookalike products, and under certain conditions have recognised unfair competition.
In Re Colussi v Elledi 2011 (Naples Court, November 5 2001) it was ruled that the slavish imitation of the essential elements of the packaging of another party’s product is an act of unfair competition in cases of lookalike products, merely because of the likelihood of association between the packaging and without requiring any confusion as to the source of production.
Moreover, it held that trade dress comprises the various components of the packaging of a product or configuration of the product itself. In fact, “the majority of products are not directly put into their channel of trade as ‘naked’ products, but are sold packaged”.
This means that such packaging is crucial to the impact on consumers’ perceptions and their ability to distinguish such products.
Packaging not only identifies the source of a product, but also delivers a commercial message. Consequently, product packaging attracts consumer attention and improves the chance of a sale.
In Amica Chips SpA v Saiwa SpA it was held that in relation to low-cost, widely distributed products, packaging can play an even more attractive role than the trademark itself. Since the packaging falls under the immediate perception of consumers, it has a crucial distinguishing function as well as simultaneously attracting the consumer’s attention.
Therefore, the court argued that the colour, for example, or other elements – even if they are not the main features of a product’s appearance – may be considered relevant, and as such are crucial in a finding of counterfeiting.
Moreover, in Havana Club Holding v Barman Srl (Turin Court, November 19 2001) the court ruled that the appearance of products labelled ‘Ron Havana’ could determine a risk of confusion on the part of the public since it could mislead the consumer as to the source of the goods. The two liquors were offered on sale in bottles of the same shape and colour (identical bottles for different kinds of rum), with the same red circle and with the word ‘Havana’ protruding from the circle. Therefore, the court deemed that the consumer was unlikely to notice the remaining minor differences between the packaging of the goods at issue, since the similarities were prevalent and of greater significance than the elements of diversity, which would lead inevitably to confusion between the products.
However, not all Italian courts take the same sensitive approach towards the lookalike phenomenon or trade dress in general. There is currently no well-established case law on the matter, but the courts often decide trade dress cases under the general principles of unfair competition.