Article 9 of the Code of Industrial Property Rights, in force since March 2005, establishes that a sign consisting exclusively of a shape cannot be registered as a trademark if such shape:
- results from the nature of the goods;
- is necessary to obtain a technical result; or
- adds substantial value to the goods.
It follows that, as a general rule, product shapes may not enjoy protection as a trademark. However, they can be protected as an industrial design provided that they are new and have individual character.
In Italy, a registration for an industrial design can be extended up to a total term of 25 years from the filing date of the application. This is a long term of protection compared to other jurisdictions where design protection can be obtained, for instance, for a period of 10 years (in Canada) or 14 years (in the United States). Nevertheless, 25 years may not constitute sufficient protection for certain industrial design products which enjoy major success on the market for decades.
In such case, is it possible to obtain protection under a different IP right?
Bearing in mind the three exceptions set forth by Article 9 of the code, only a distinctive shape may obtain protection as a three-dimensional trademark, provided that it is not technically necessary and it does not add substantial value to goods - but what shape enjoys distinctiveness without adding value to the product itself? Should it be an unattractive shape?
Previously, the same product could not enjoy both trademark protection and protection as an industrial design. However, since the new Law on Industrial Designs and the Code of Industrial Property Rights came in force, a product shape can be protected under both categories. Italian case law and legal literature have begun to consider that a shape enjoying distinctiveness for average users of the product could be registered as a trademark, provided that it is not the primary value on the basis of which consumers select the product.
In this scenario, the main difficulty is drawing the line between shapes that may obtain protection only through a design patent or registration and those which may be protected as a three-dimensional trademark. Could a strategy combining both types of protection solve the dilemma? The following strategy might work.
First, a new shape should be protected by filing an industrial design application which can be maintained for 25 years. Later, an application for a three-dimensional trademark may be filed. Since such applications are often refused on account of lack of distinctive character, the use of the shape on the market should be supported by proper packaging and advertising in order for the trademark to acquire distinctiveness through use.
In this regard, Italian Board of Appeal Decision 10/05 (8th November 2004), dealing with the protection of the shape of a lamp as a three-dimensional trademark, is of interest. The Italian Trademark Office initially rejected an application for this shape and the appeal board confirmed the first instance decision. Surprisingly, the review body did not take into account the evidence provided by the applicant to prove the secondary meaning acquired by the shape of the lamp through use, and accordingly refused registration definitively.
The appeal board decision clarified that acquired distinctiveness may (in spite of the first exception) allow registration as a trademark only of a shape which results from the nature of the goods. The board did not acknowledge this possibility for the other two exceptions
This conclusion implies that industrial design products which survive on the market for over 25 years and which are not entitled to trademark protection could be imitated by third parties as soon as the protection afforded by the design registration lapses. However, in this context, copyright provisions may help.
The most important innovation of the Law on Designs, which came into force in 2001, is reflected in Article 44 of the code, recalling Article 2 of the Copyright Law. This provision grants copyright protection for 70 years after the death of the author to industrial designs enjoying creative character and artistic value.
Therefore, this offers the opportunity to achieve multiple-basis protection for a product shape:
- as an industrial design;
- as a trademark; and/or
- under copyright provisions.
The challenge for innovators and their legal advisers is to make the right choices from these various opportunities based on the facts of each individual case.