Industrial exclusive rights are undoubtedly the main legal tool for the enforcement and protection of industrial and intellectual creations. Given their prominent role in the IP field, let us look at what they are and how to obtain them.
Industrial rights: an introduction
The expression "industrial right" or "industrial exclusivity" identifies the main legal instrument for the enforcement and protection of industrial and intellectual creations.
When approaching the broad subject of industrial rights, it is important to understand the general ratio underpinning the relevant rules.
Trademarks, patents, models, designs and copyright over creative works (a film, a book, a song) all represent, from an economic and often entrepreneurial perspective, an economically relevant tool needed to stand out in one's market or sector.
For this to be possible, behind every element of the varied puzzle of intellectual property there are investments of both an economic and a non-economic nature.
On the one hand, consider the advertising investments made to establish a trademark on the market, or the resources invested in pharmaceutical research to develop a new drug. On the other hand, one may imagine the economic investment required to develop a specific innovative technical process. A similar reasoning applies to works protected by copyright, in view of the so-called "creative effort" behind a musical composition or a book.
Against this background, the "industrial right" translates into an exclusive right that the legislator recognises, first and foremost, to those who have made such investments. It is essentially a prismatic right which – depending on the specific IP right – confers a distinctive bundle of prerogatives, but which can generally be identified as the right to oppose any undue interference, exploitation or appropriation of one's own sign, creation or work.
The rules on industrial rights are laid down in Italian law primarily in the Industrial Property Code (Legislative Decree No. 30 of 10 February 2005, as amended) and, as regards copyright, in Law No. 633 of 1941.
Trademarks
Among distinctive signs, the one that has always attracted particular attention – even from non-specialists – is the trademark. It is probably the best-known industrial right, being the tool par excellence for protecting signs that not only distinguish products or services on the basis of their business origin, but also distinguish one undertaking's products from those of its competitors.
Trademark protection generally results from a formal act: registration. That said, a more limited and weaker form of protection is also available for so-called de facto trademarks which, although not registered, have acquired a particular reputation or have long been used in a specific area (so-called local prior use).
Registration can be obtained at national level by filing an application before the UIBM (Italian Patent and Trademark Office), or at European level through a filing before the EUIPO (European Union Intellectual Property Office). It is also possible to apply for an international trademark under a procedure administered by WIPO (World Intellectual Property Organization). Protection lasts for ten years and is potentially renewable indefinitely.
The trademark must be new, i.e. not conflict with rights previously acquired on the sign by third parties. The core requirement is distinctiveness: generic product names or signs indicating geographical origin, quality, kind or other characteristics of the product cannot be registered as trademarks. The position is different where such signs or terms are used in relation to products or services with which they have no material or conceptual connection (e.g. the "Montblanc" pen).
Patents
In everyday language, the term patent identifies not only the administrative act embodying the right, but also the corresponding legal protection and the invention itself.
Patent protection is the oldest technique for the legal administration of technological innovation. It grants the proprietor an exclusive reservation – of variable duration depending on the patent and non-renewable – over the manufacture, commerce and industrial use of the patented products.
There are different types of patent rights:
- The patent for invention: protects new and original solutions to a technical problem not yet resolved, capable of industrial application. Protection lasts up to 20 years, non-renewable, from the filing date, and is subject to the payment of an annual maintenance fee. The invention must be new, involve an inventive step and be capable of industrial application.
- The utility model patent: relates to the "new form of an industrial product capable of conferring on the product itself a particular effectiveness or convenience of application or use". Protection lasts for 10 years from the filing date.
New plant varieties
"New plant varieties" are subject to a specific protection known as "plant variety right". In Italy, this right is obtained by filing an electronic application before the UIBM. Protection generally lasts 20 years, save for new tree and vine varieties, for which it lasts 30 years. At European level, the application is filed with the Community Plant Variety Office (CPVO) in Angers, and protection lasts 25 years (30 for trees and vines).
For a new variety to be registrable, it must meet four requirements: new, distinct, uniform and stable.
Designs: protection of designs and models
The following can be registered as a design or model: "the appearance of the whole or part of a product resulting from the features of the lines, contours, colours, shape, texture or materials of the product itself or of its ornamentation, provided they are new and have individual character".
Registration requires two conditions: novelty and individual character. Protection lasts 5 years from the filing date, renewable up to a maximum of 25 years.
Copyright
Pursuant to Article 1 of the Italian Copyright Law, copyright protects "works of the intellect of a creative nature belonging to literature, music, figurative arts, architecture, theatre and cinema, whatever the mode or form of expression" and also software and databases. The list is not exhaustive and remains open.