Published article on World Trademark Review (n.14 July/August 2008)
While trade dress is not recognized as such by Italian law, the appearance of a product may be protected under trademark law, model and design law, copyright law and unfair competition law
Neither Italian statute nor case law provides a definition of ‘trade dress’; there is also no uniform legal doctrine on the subject. However, the need for operators in the Italian market to protect their products’ appearance (ie, shapes, lines, images and colours) makes it crucial to define the term.
Trade dress encompasses the special features of products which make their appearance unique (eg, packaging). Generally speaking, this means the external aspect of a product, which seeks to exploit its suggestiveness and its power of attraction as much as possible.
Trade dress is therefore a mix of features relating to the packaging and appearance of products. Although such features may be mainly considered decorative and ornamental, consumers may recall the specific products and recognize them as source identifiers.
Large retail chains tend to exploit this by producing private-label goods that look similar to well-known branded products.
The exterior aspect or the appearance of products may be protected in Italy under the laws applying to:
• models and designs;
• copyright; and
• unfair competition.
The best protection for product shapes and packaging is afforded by trademark law. It provides exclusive and unlimited protection to rights owners in accordance with Article 7 of the Italian Code of Industrial Property.
Under that provision, the shape of any product may be registered as a trademark provided that it is distinctive.
However, Article 9 of the code provides that “the signs which consist exclusively of the shape which results from the nature itself of the product, of the shape of the product which is necessary to obtain a technical result or of the shape which gives substantial value to the product may not be registered as trademarks”.
Shapes giving substantial value to products are those which affect consumers when deciding on certain products within the same channel of trade.
A number of applications to register packages and product containers as shape marks have been filed over the years in Italy. Not all of them have been successful. For instance, the Court of Genoa held that the shape of MON CHÉRI chocolates and the cubical transparent shape of their packaging were not protectable (January 4 1997). The Court of Naples held that the shape of an apple was not protectable as a trademark when used in connection with apple liquor.
Industrial design protection is regulated in Italy by Decree-Law 9 5/2001. That statute implements EU Directive 98/71/EC and is in compliance with EU Rule 6/2006.
Decree-Law 95/2001 radically altered the principles applying to design law by removing the ‘special ornament’ requirement of previous legislation. This allows for broader protection of packaging, shapes and other external aspects of products.
According to Article 31 of the Italian Code of Industrial Property, “registration as designs and models may be granted to the appearance of the whole or a part of a product resulting, in particular, from the features of the lines, contours, shape, texture or materials of the product itself or of its ornamentation, provided that the same are new and have individual character… ‘Product’ means any industrial or handmade items, including…parts intended to be assembled into a complex product, packaging, presentation, graphic symbols and typographic fonts, but not computer software”. The registration of a design is valid for five years from the application date (extendable for up to 25 years).
A design or model is new if no identical design or model has been divulged before the application date in the same channel of trade.
Furthermore, a design has individual character if an informed consumer perceives it differently from another one in terms of overall impression, thus distinguishing such a model or design from those which were available to the public on a prior date. The ‘informed consumer’ may be defined as a careful consumer who does not have special expertise.
The new law does not require that a design be ‘ornamental’ to be protectable, although this was an essential requirement in the previous law.
It is undisputed that to be distinctive, such designs and models must be original, novel and may not be deemed to be standardized, obvious shapes.
In other words, it is required that the distinctiveness of such designs and models not be linked to the intrinsic nature of the product and, as such, be based on consumers’ overall impression to make them unique.
As a consequence, whenever it is possible to obtain protection under the trade dress principles for models and designs, any counterfeiting matter is ruled in accordance with the general rules on counterfeiting, including money damages or preliminary and permanent injunctive relief.
Finally, the substantial difference between shape trademarks and models/designs is the scope of shapes and appearance recognized by consumers.
A further kind of protection for the shape of products is afforded by copyright law. Article 2(10) of the Italian Copyright Law 633/1941 provides protection to “industrial design works which are considered, by themselves, creative and artistic works”.
It is thus possible under Italian law to combine model and copyright protection. Article 44 of the Italian IP Code provides that “the rights to the economic use of industrial designs and models protected pursuant to [Article 2(1)(10) of Law 633 of April 22 1941] are valid for the entire life of the author and terminate at the end of the 70th calendar year after the death of the last of the co-authors”.
Therefore, a design/model which is considered to be part of the public domain at the expiration of 25 years from the filing date may receive copyright protection for up to 70 years. However, model/design protection is much broader than copyright protection. In fact, while copyright can be enforced only against identical copies of a shape, design/model protection extends to similar (not just identical) copies of a shape.
Thus, the best way to exploit shapes commercially is to register them as industrial designs.
Unfortunately, counterfeiters are sophisticated enough to try to find loopholes in design and trademark law. Counterfeit products often copy the elements that help to create consumers’ main impression of a product, but they do so without infringing trademark or design rights prima facie.
A common scenario is for a product’s features to be different from those of the original one. However, the overall impression that this product creates recalls the key features of the original product, as these features are well known to consumers. This means that consumers may be misled as to the origin of the product.
The general principles of unfair competition may help fight such subtle infringements. Article 2598 of the Italian Civil Code provides that an unfair competitor is “anyone who uses signs which are likely to confuse and mislead consumers or exploit competitors’ efforts using similar goods, or takes any actions which, as a result, mislead and create confusion … [and] anyone who directly or indirectly causes damages to another company by means of professional unfair acts”.
Italian court decisions are not uniform on such issues. They base their reasoning on either the broader principle of professional fairness or the narrower principle of unfair competition on the side of product comparisons.
A few decisions should be highlighted. In Colussi v Elledi (July 11 2000), the Court of Naples recognized that packaging and trade dress are crucial elements to consider when establishing consumers’ overall impression. The court held that “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 affect consumers’ perception by attracting and distinguishing such products. Any packaging is not only a concrete source identifier but also … a way to deliver a commercial message. As a consequence, products’ packaging attract consumers’ attention and enhances the chance of sale.”
In In re Amica Chips SpA v Saiwa SpA, the same court held that the similarity between the products at issue was undisputed. In doing so, the court claimed that the same kind of red colour 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 making a finding of counterfeiting.
Similarly, in In re Havana Club Holding v Barman Srl, the Court of Turin ruled that the exterior appearance of rum bottles was sufficient to create confusion among average consumers, especially when consumers based their analysis on an imperfect recollection from memory.
Italian courts often decide trade dress cases under the general principles of unfair competition.