Industrial property rights certainly constitute the primary legal instrument for the enforcement and protection of industrial and intellectual creations. Given their preeminent role within the field of IP, let us examine what they are and how they are obtained.
Industrial property rights: introductory remarks
The phrase "industrial property right" (or "industrial exclusivity") identifies the main legal instrument for the enforcement and protection of industrial and intellectual creations.
What is important to understand when approaching the vast topic of industrial property rights is the more general ratio underpinning their regulation.
Trademarks, patents, models, design, and copyright for creative works of the mind (such as a film, a book, or a song) represent, from an economic and often entrepreneurial perspective, a relevant and necessary economic tool to establish oneself in different ways and operate within one's market or sector of reference.
For this to be possible, at the base of all the elements making up the multifaceted puzzle of intellectual property listed above, there are both economic and non-economic investments.
On one hand, consider the advertising investments made to establish a brand in the market, or all the resources invested in pharmaceutical research for the development of a new drug. On the other hand, one need only imagine the economic investment necessary to develop a specific innovative technical process. A similar argument can be made for works protected by copyright, considering the so-called "creative effort" hidden behind a musical composition or a book.
It is in this context that the "industrial property right" translates into an exclusive right that the legislator grants primarily to those who have made such investments. In essence, it is a prismatic right: depending on the specific type of property, it offers a peculiar range of rights, but it can be generally identified as the right to oppose any undue interference, exploitation, or appropriation of one's own sign, creation, or work.
The regulation of industrial property rights in our legal system is primarily rooted in the Codice della Proprietà Industriale (Industrial Property Code – Legislative Decree no. 30 of 10 February 2005 and subsequent amendments) and, as regards copyright, in Law no. 633 of 1941. There are also several EU sources (Regulations and Directives) regulating these rights at the European level and, at the international level, various conventions and treaties.
Having outlined the perimeter and the general legal-economic ratio of industrial property rights, it is now necessary to understand specifically what they are and how this type of protection can be obtained.
Industrial property rights: what are they, what do they consist of, and how are they obtained?
The trademark
Among distinctive signs, the one that has always captured specific attention even from non-experts is the trademark. In fact, the trademark probably represents the best-known industrial property right, being the protective instrument par excellence for signs capable not only of distinguishing products or services by virtue of their entrepreneurial origin but also of distinguishing one company's products from those of its competitors.
Trademark protection generally follows a formal act: registration. It should be noted that, in reality, protection—albeit limited and weaker—is also provided for the so-called marchio di fatto (unregistered trademark) which, despite not being registered, has acquired a specific reputation or has been used for a long time in a certain area (so-called local prior use).
Registration can be obtained at the national level by—in the case of Italy—filing an application with the UIBM (Ufficio Italiano Brevetti e Marchi – Italian Patent and Trademark Office), or at the European level through an application to the EUIPO (European Union Intellectual Property Office).
One can also proceed with an application for an international trademark registration under a procedure managed by WIPO (World Intellectual Property Organization), which however presupposes the existence of a prior registered trademark at the domestic or European level. The legal protection—limited to the respective territorial scopes—obtained through these formal requirements lasts ten years but is potentially renewable indefinitely. Such protection implies an exclusive right to the trademark in the territory of reference and allows the owner to oppose any undue use or counterfeiting thereof.
The registration of a trademark has the nature of a constitutive assessment but, at the same time, has a precarious efficacy since it is always subject, or liable, to an evaluation of its validity by the judicial authority. For this reason, it is of fundamental importance to understand what requirements a trademark must satisfy to be registered and to maintain this specific legal protection over time.
Firstly, the trademark must be new, meaning it must not conflict with rights previously acquired on the sign by third parties. However, this is a so-called relative impediment, which can be overcome through the consent of the right holder.
We can have word marks (e.g., Coca Cola), figurative marks (e.g., the green "biscione" snake alongside the Milan coat of arms in the Alfa Romeo sign), mixed marks (e.g., the Alfa Romeo trademark composed of the image described above and the words "Alfa Romeo"), sound marks (e.g., classic "jingles"), olfactory marks (provided they are not used in relation to perfumes), shape marks, etc. The requirement par excellence that these signs must possess is distinctive character.
Indeed, considering that the potential infinite renewal of a trademark could lead to a monopoly by the trademark owner over the relative sign, if this requirement were not imposed, there would be a risk that a monopoly (and exclusivity) over the word/sign could also translate in practice into a monopoly over the product itself (and therefore over the production activity itself).
Therefore, generic names of products (e.g., a "coffee" trademark for the product coffee) or all those signs or terms generally used to indicate geographical origin (e.g., a "Sicily" trademark for lemons), quality, kind, or other characteristics of the product to which the sign relates, are not registrable as trademarks due to lack of distinctiveness.
The situation is different for such signs or terms when they are used with reference to products or services with which they have no material or conceptual link (e.g., the "Montblanc" pen).
Thus, the greater the distinctive character of a trademark, the "stronger" it and its relative protection will be. Furthermore, the distinctiveness of a trademark is an extremely volatile characteristic, which can be lost over time (so-called genericization of the trademark) or can be acquired over time (so-called secondary meaning).
Finally, the trademark must be lawful, meaning it must not be contrary to the law, public policy, or accepted principles of morality, and it must not be misleading to the public. The use of coats of arms, flags, or other signs that could be confused with those protected by international conventions (e.g., the five Olympic rings) as trademarks is also prohibited.
Patents
In everyday language, the term "patent" now identifies not only the administrative act embodying the right itself (simply put, the document containing the description and claims of the invention) but also the relative legal protection and the invention itself.
Patent protection represents the oldest technique of legal administration of technological innovation. It follows a registration application at the competent Office, similar to what was seen for trademarks—UIBM for Italy, for example—and grants the owner an exclusive right—of variable duration depending on the patent and non-renewable—to produce, trade, and industrially use the patented products or the specific inventive process used to obtain a good (and the relative goods obtained through such procedure).
There are different types of patent rights:
- The patent for invention: The patent for invention protects all those that can be considered new and original solutions to a technical problem not yet solved, capable of industrial application. The invention may, on one hand, consist of a product (so-called product patent) such as the famous "Moka" pot; on the other hand, it may consist of an innovative technical process (so-called process patent). Protection for a patent for invention lasts up to 20 years, non-renewable, starting from the filing date of the application and is subject, for that period, to the payment of an annual maintenance fee, in the absence of which the protection offered lapses. For an invention to be patentable, it is essential that it be new, meaning it is not already included in the state of the art and, in any case, has not already been disclosed. It must also involve an inventive step, meaning it must not be obvious to a person skilled in the art from the current state of the art. Finally, it must be capable of industrial application, meaning it can be manufactured or used in any kind of industry.
- The utility model patent: With the phrase "utility model," the legislator refers to the "new shape of an industrial product, capable of conferring on the product itself a particular efficacy or ease of application or use." Thus, in these cases, the invention does not consist of a new solution to a technical problem, but in a technical innovation that concerns marginal and/or executive aspects of a known product and of which it constitutes a functional improvement (e.g., the famous Adidas "Tango" ball, characterized by 32 panels – 12 pentagonal and 20 hexagonal – which guaranteed greater sphericity to the ball). Patent protection, in this case too, follows the filing of a registration application but is valid for 10 years starting from the filing of the application. While it seems abstractly easy to distinguish between an invention and a utility model, in practice the line between these two categories narrows significantly. For this reason, the institution of so-called "double filing" is provided, which allows for the simultaneous filing of two patent applications for the same invention: a patent for invention application and a utility model patent application. In this case, the UIBM will decide which application to pursue. The possibility of converting the patent application—from invention to utility model and vice versa—upon invitation by the Office itself serves the same purpose.
Plant varieties and the so-called "plant variety right"
"New plant varieties" can be understood as new plant species obtainable through various processes such as crossing or selection, interventions on genetic factors through biochemistry, or through procedures pertaining to biotechnology or genetic engineering (e.g., the "Cripps Pink" apple variety, better known as "Pink Lady" by virtue of the trademark under which it is marketed). Such varieties are subject to specific protection in both the Italian and European legal systems, which generally takes the name of "plant variety right."
This protection consists of an exclusive right—so-called breeder's right—to produce and reproduce the variety, to market, export, import it, and to hold it for the aforementioned purposes.
At the Italian level, the right follows the filing of an online application with the UIBM or in paper form with the Chambers of Commerce. In Italy, the duration of protection is generally 20 years, except for new varieties of trees and vines, for which it is 30 years.
European-level protection is obtained by filing the application with the Community Plant Variety Office (CPVO), based in Angers, France. Similarly to the operation of other European-level rights, in this case too, by filing at the supranational level, protection is obtained in all Member States of the European Union, which however, in this case, is for 25 years, except for new varieties of trees and vines, for which it is 30 years.
However, for a new variety to be registered and subject to the aforementioned legal protection, it must possess four requirements. It must first be new, meaning it must not have been marketed, before the filing date of the application, for more than 1 year in Italy and for more than 4 years – 6 years for vines and trees – in another State.
It must also possess distinctness, meaning it must be capable of being distinguished from all other currently known varieties by one or more characteristics such as maturity or color, for example. It must also be uniform, and therefore present its relevant and pertinent characters in all the specimens that compose it. Finally, it must be stable, meaning it maintains these characters constant from one specimen to another even following reproductions, multiplications, or cycles thereof.
Design: the protection of drawings and models
The Italian legislator—similarly to what is provided at the EU level—has stipulated that the "appearance of the whole product or a part of it resulting, in particular, from the features of the lines, contours, colors, shape, surface structure or materials of the product itself or its ornamentation, provided that they are new and have individual character" can be registered as a design or model. Thus, the protection offered, which falls under the general umbrella of "design," aims to protect what can be described as the external appearance or shape of a product.
In the vast majority of cases, when thinking of a design, one inevitably refers to a three-dimensional object or product (e.g., a lamp, a chair, etc.). However, design protection also covers what is two-dimensional in character, such as decorations, graphic designs, or typographic characters.
In order to proceed with the registration of a design and thus enjoy that exclusive right typical of industrial property rights, two requirements must be met at the time of application. The first is novelty, as the designs or models must not have been previously disclosed by other parties. If the design has been previously disclosed by its "creator," this circumstance does not prevent registration provided that, within 12 months immediately following the date of first disclosure, the creator files the relative registration application.
The second is individual character, meaning the design or model must produce on an informed user a general impression different from that produced by any other model or design previously disclosed. Therefore, the protection, while covering the external appearance, does not presuppose a qualitative assessment or evaluation of merit.
At the Italian level, the application must be filed with the UIBM, while at the European level, it must be filed with the EUIPO. It is also possible to apply for an international design registration—which is independent of the existence of a prior national design—by addressing the request to WIPO (or through a national Office such as the UIBM). In the latter case, the application can be submitted by any citizen or other person, including legal entities, domiciled in or having an effective industrial/commercial establishment in one of the contracting states of the Hague Agreement Concerning the International Deposit of Industrial Designs of 28 November 1960.
The duration of protection is 5 years from the filing of the design registration application. This term is renewable until a maximum of 25 years is reached.
The property right resulting from registration entails, in this case too, an exclusive right that translates into the possibility of preventing unauthorized third parties from using or employing the registered design. Finally, similar to what was seen for trademarks, unregistered designs are also granted limited legal protection, which in this case lasts for 3 years from disclosure.
Copyright
Under Art. 1 of the Law on Copyright, "intellectual works of a creative character belonging to literature, music, figurative arts, architecture, theater and cinematography, whatever their mode or form of expression" are protected, as well as software and databases. This is a non-exhaustive and open list, capable of including all works that present the same basic characteristics as those already included, as has happened, for example, for photography or for software itself.
Copyright does not require the fulfillment of any formality, such as registration, but arises at the very moment the work is created. It is therefore only necessary that the work does not remain in the author's mind but is expressed in a perceptible form. It should be noted, however, that in the event of a violation of copyright and related rights, the person invoking them must prove authorship of the work or that they are the holder of the rights to it; given the informality of the right in its creation and life, this leads to significant difficulties.
The legal protection of copyright, functional to guaranteeing the author as broad a control as possible over the economic utilization—but not only—of the work, is divided into:
- Economic rights, linked to the economic exploitation of the work: these are functional to guaranteeing the author participation in the revenues deriving from the use of their work. Among these various rights, we recall the right of reproduction, the right of distribution, the right of rental and lending, the rights of representation, performance and recitation, the right of radio/television broadcasting, the right of processing, and the droit de suite (resale right). The economic relevance of this range of mutually independent rights derives from the fact that they are freely and individually available and alienable by the author. The duration of the rights of economic exploitation of the work granted to the author (and to their heirs) is 70 years after the latter's death.
- Moral rights: the author is also granted the right to decide whether and when to publish the work, the right of paternity (meaning primarily the right to prevent third parties from attributing the work to themselves or others), the right to the integrity of the work (meaning the right to oppose and prohibit any modification of, or act upon, their work that could prejudice their honor or reputation), and, finally, the right to withdraw the work from the market—subject to compensation to those who have purchased the relevant rights—if there are serious moral reasons (for example, if the author has radically changed their convictions expressed in the work, to such an extent that the work's continued presence on the market would constitute a serious prejudice to their personal interests and ideals). These moral rights are not subject to duration limits, are inalienable, and cannot be waived.