Design Protection under Criminal Law
Registered Design and Copyright
Nowadays, the aesthetic aspect of an object plays a relevant role also due to the greater accessibility to online platforms, where users can check and compare a wide variety of products and sometimes a particularly attractive form can represent the decisive element for an item to be bought.
A product can be protected from an aesthetic point of view with a Design or Model , mentioned by the Italian law in the Intellectual Property Code (Legislative Decree 2005 n. 30 and subsequent amendments) and in particular in Articles 31 to 43.
It is possible to protect the aesthetic form of an object also at an international level with a Design application filed with WIPO (World Intellectual Property Organization) or EUIPO (European Intellectual Property Office). It is also possible to file design applications with the national Patent Offices.
This kind of protection needs a compulsory constitutive act imposing the owner to file a Design or Model application with the competent offices. Design protection lasts for 5 years and is renewable every 5 years – up to 25 years in total – for all applications filed in Italy and for EU applications filed with EUIPO. However, many other countries also grant the same duration.
Another possibility is the protection with Copyright Law (Law n. 633 of April 22nd 1941), which Article 44 of IPC refers to with regards to the rights of economic exploitation. In such case, contrary to what we explained for designs or models applications, the protection does not need a constitutive act, but actually starts from the moment in which the work is created by its author. Therefore, the owner can benefit from the protection without having to file a formal application with a competent office. Copyright duration in Italy covers the whole life of the author plus 70 years.
Protection under Criminal Law
The protection of an aesthetic form can be obtained both under civil and Criminal Law. The protection under criminal law is established mainly by the Criminal Code, providing for fines and prison sentences. In short, according to Article 473 of the Criminal Code, whoever counterfeits, alters or uses patents, designs or models, either national or international, is subject to the penalty of imprisonment from 1 to 4 years or to pay a fine from 3.500 to 35.000 Euros. According to Article 517 ter of the Criminal Code, whoever – even possibly being aware of the existence of an IP right – makes or industrially uses objects or other goods created by usurping an IP right or violating the same, shall be punished, if a complaint is filed, with imprisonment up to 2 years and a fine up to 20.000 Euros. This Article provides for the application of the same penalties even for people importing in Italy, holding for sale, or actually selling products violating IP rights. In the latter case, it is not even necessary to file a complaint.
The two above-mentioned articles of the Criminal Code refer to the protection of “acknowledged” rights, which, in case of designs, need the filing of an application to be made either nationally or internationally (for example, by filing applications with WIPO or EUIPO).
In fact, in order for such cases to occur, it is expressly required that national laws, EU regulations and international agreements regarding IP rights protection are respected.
Indeed, according to the interpretation of the prevailing case law (among which Cassation sentence n.25273 of June 26th 2012, regarding the violation of a trademark), in order to obtain protection under criminal law, it is necessary that the design, besides being filed, has also been granted. In other words, a pending application is not sufficient.
Moreover, also the above-mentioned copyright law provides for the protection of creative works under criminal law, in particular with regards to Articles 171-174 quinquies.
However, there are some differences between the protection obtained with a registered design and through copyright.
First, the requirements needed for an object to benefit from copyright are high, as both creative character and artistic value are needed. These criteria, even though they are discretional, are stricter and should add up to those needed for design or model registration, that is to say novelty and originality (the so-called individual character). As a consequence, copyright requires a high level of characterization, namely “an artistic value verified with objective criteria” (Court of Milano, n. 11942, November 28th 2017), which has to be proved with both subjective and objective parameters. For example, as for the first parameter, the originality of forms should be proved in comparison to similar products on the market. With regards to the second parameter, it should be demonstrated by the recognitions the object obtained within the field or by the fact that it was created by a well-known designer. The Chaise Longue by Le Corbusier is a famous case of an industrial object acknowledged as protected by copyright (Court of Milano, RG 72203/2010 – 28/04/2011).
Moreover, precisely because the copyright does not require the filing of a formal application, such right does not benefit from the presumption of validity, thus making it necessary to prove its existence during a criminal proceeding. This was established by the Supreme Court of Cassation (III Criminal Section, n. 2402, 22-01-2018), according to which “the crime of manufacturing and trading goods by usurping IP rights is established also for industrial design works meant for serial production, which can be protected according to[Copyright Law] (Law n. 633 of 1941, art. 2, n. 10), where the conditions indicated by law are met, given by the creative character and the artistic value of the work”.
Therefore, if you are willing to protect the aesthetic aspect of an object, filing a design or model application is highly recommended, since it has some advantages, such as a higher chance to obtain a protected IP right and its presumption of validity, thus making it suitable to be effectively enforced against a counterfeiter.