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Recent amendments of the Italian design patent law are conceived to implement in Italy the European Directive 71/98/EC on the legal protection of designs. The main changes to the requirements provided in the previous form of the law are related to the requisites of the design in order to obtain the registration, the validity period of the registration, the suppression of the prohibition to cumulate different protections (design patent, copyright, three-dimensional trademark). Thus, designs having a particular artistic value may obtain the protection conferred by copyright, design registration and, eventually, by three-dimensional trademark. Requisites In particular, as far as the requisites of the design in order to obtain the registration, it is now provided that the design must be new and must have an individual character. No mention is made of any "special ornament", as previously provided. It is possible to protect any industrial or craft object, including components that must be assembled to form a complex product, packaging materials, presentations, graphic symbols and typographic characters, excluding computer programs. A design is new if no identical (i.e. differing only for irrelevant details) design has been made known prior to the filing date of the application for registration or, should priority be claimed, then before the date of the latter. A grace period of 12 months is provided. No grace period was provided for in the previous law. A design has an individual character if the general impression aroused in the informed user differs from the general impression aroused in such user by any design that has been made known before the filing or priority date of the application. The requisite of individual character was not provided for in the previous law. The amendments to the law also state the protection of spare parts ("components that must be assembled to form a complex product"), if they remain visible during normal use and the visible characteristics of the components have in themselves the requirements of novelty and individuality. Exclusive rights on the components of a complex product cannot be claimed to prevent the production and sale of these components to repair the complex product itself, and restoring its original aspect, until the European Directive 71/98/EC is not adequately modified. Validity period The validity period of a design registration is extended from 15 to 25 years (divided in 5 periods of 5 years) from the date of filing. This provision grants its benefits to all design patents still effective on April 19th, 2001.
Rome, February 16, 2001 On February 2, 2001 the Council of Ministers approved the Legislative Decree implementing Directive 71/98/EC on the legal protection of designs. The above mentioned decree will become part of our legal system after 15 days from its publication on the Official Gazette (unless a different period is expressly provided). The publication is expected within the next few weeks. As far as we know, the Decree in question would admit also the protection of "spare parts", after an adequate transitional period. In this regard, we would like to draw your attention to our previous notes on this subject.
According to the EU Directive 98/71/CE of October 28,1998 the EU Authorities should establish within the year 2004 how to deal with the spare-parts protection issue. This is how the Directive has provisionally settled the mostly debated issue arisen in respect of the discipline for the reproduction of spare-parts by third unauthorized parties. No doubt they will be Year 2004 compliant; we shall see how. . Meanwhile an action has been brought by the European Commission against the French Republic, in a case dealing with spare-parts : as known, one of the cores of the "Treaty of Rome" is represented by the free movement of goods: i.e. the elimination of quantitative restrictions between Member states (as of secs. 30-36). In particular, sec. 30 states that "quantitative restrictions on imports and all measures having equivalent effect shall, without prejudice to the following provisions, be prohibited between Member States". While according to sec. 36 "the provisions of Articles 30 to 34 shall not preclude prohibitions or restrictions on imports, exports or goods in transit justified on grounds of protection of industrial and commercial property. Such prohibitions or restrictions shall not, however, constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States". In the light of that, does it constitute an infringement of the Treaty the retention by the custom French authorities of spare parts for motor vehicles which have been manufactured in Spain and are intended for the Italian market? Since there has not been any harmonization at Community level of the conditions and detailed rules concerning the protection of design for spare part nor Directive 98/71/ECC on the legal protection of design is exhaustive at this regard, the solution of this issue is of immediate interest. Actually the Commission's view is that "the exclusive right conferred on the proprietor of rights in a design encompasses the manufacture and marketing of the goods in question on the national territory, and, having regard to the principle of territoriality of IPR's, it cannot have the effect of protecting those rights on markets other than the national market. The mere transit through French territory of goods which have not been manufactured there and which are not intended to be marketed there does not in itself constitute an infringement of the exclusive right, recognized under French law, held by the proprietor of the rights in a design". Still with reference to spare-parts, in Italy the Supreme Court has recently stated the principle that stockists can use trademarks owned by car manufacturers on-spare parts produced by them, provided that the way such use is made is not likely to let customers believe that the subject spare-parts are manufactured by the trademarks' owners.
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Publication on the Official Gazette occurred on April 4, 2001.
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