Industrial Property Rights: Requirements and application scopes
Industrial property rights: the meaning?
The phrase “industrial property right” indicates an exclusive right given to a subject upon a specific industrial asset or an intellectual creation.
It basically means that with this right it is possible to oppose to any unauthorized use of the mark, the work, the drawing or the invention by third parties in the market and to call on the competent judicial authorities to obtain the immediate suspension of such illicit use.
Therefore, industrial property rights are needed to protect entrepreneurs or authors from the risks of illegitimate appropriation or exploitation of their work.
Types of industrial property rights and advantages:
The TRADEMARK is one of the best known and more widespread industrial property rights.
It protects the sign used by a company to distinguish its products or services from those of competitors. It can be considered like the company’s business card.
It can have several aspects and can be represented by words, drawings, letters, numbers, sounds, shape of the product or packaging, colour combinations or shades.
It is necessary for a trademark to be effective that it is new, hence different and not to be confused with other previous trademarks, and has distinctive character, therefore it can identify and distinguish certain goods or products in the market.
Generally speaking, a trademark with distinctive character doesn’t have any link with the object it identifies, that is to say it has no conceptual connection with the product it marks, in order to capture the consumer’s attention more easily.
The advantage to have a strongly distinctive trademark is that it’s likely to get a broad and solid protection, to be used also against partial or limited imitations. On the contrary, a trademark bearing a limited distinctive character because partially descriptive can be protected only against identical or straightforward knockoffs.
Trademark protection usually starts with its registration before the competent administrative office (in Italy, it’s the UIBM), lasts 10 years and it’s renewable ad libitum.
The Italian national regulation allows to protect also the so-called de facto trademark, which is the trademark only used but not yet registered. However, in this regard, the protection is subject to specific conditions of use and distribution, which are not always easy to demonstrate in court.
Another IP right is the PATENT.
With patents it is possible to protect new and original solutions to technical problems never solved before. These solutions must be capable of industrial application.
An invention in order to be patented has to bring an improvement to the previous techniques and knowledge and to represent an original and new activity. It is therefore fundamental that the invention hasn’t been spread or made accessible to the public, even by the inventor him/herself, before the application is filed.
Among the invention protected by patents there are Moka Express by Alfonso Bialetti or the three-point safety belt by Nils Bohlin.
A patent allows the inventor to stop others from producing, selling or using his/her creation, being it a product (so-called product patent) or a process (process patent).
A patent’s duration is 20 years starting from the filing date and, contrary to the trademark, it cannot be renewed when it expires.
UTILITY MODELS are patent-like IP rights, but they differ from patents because they don’t protect a new and original invention, but a new form of an industrial product giving it a “particular effectiveness or comfort in application or use”.
Compared to patents, utility models don’t provide a new solution to a technical problem and the innovation affects only side and executive aspects of something already known, by giving it more benefits and comforts.
Regulations provide for the so-called “double filing”, that is to say the chance to file a patent application both as an invention and as a utility model, leaving the choice up to the Office, together with the chance to transform a patent application in a utility model one and vice versa.
In this case as well the protection lasts 10 years starting from the filing of the application before the UIBM and it is not renewable.
DESIGN and MODELS protect the mere exterior aspect of a product, so basically its shape.
Such aspect should have no technical or practical purpose in order to be protected but only a purely esthetic significance: in other words, it should have no function other than the exterior and esthetic characterization of the product.
The requirements to register and give validity to them are the novelty and the individual character.
A Design is new if there are no identical designs or models spread before its application was filed; it has an individual character if it is capable of evoking a different general impression in an informed user compared to any other previous design.
A design should essentially look like something new and different to an expert subject of the concerned sector.
Exclusive rights upon designs and models are granted with the registration and are valid on the whole national territory for a period up to 25 years.
However, the EU regulation allows protection also to those designs and models which are not registered for a period up to 3 years starting from the first disclosure in the EU territory. This deadline is not extendable and, once expired, it doesn’t allow the protection resulting from registration.
Finally, it is important to analyze the regulation regarding COPYRIGHT.
Copyright protects works with creative character belonging to music, literature, figurative arts, architecture, cinema etc. Considering that there’s no peremptory list of the works capable of being protected, with the rise of new art forms and expressions of human creativity, more and more works ended up obtaining this kind of protection (for example software, databases).
Contrary to what people commonly think, there is no necessary application or registration in order to establish such right. Copyright is effective with the simple creative act and in that precise moment.
It is up to the author to demonstrate its authorship and the date of the same. The application filed to SIAE, for example, has this particular function to certify and prove the origin of the work.
The rights granted to the author are divided into two categories: the rights of economic exploitation and the author’s moral right.
The former regard the possibility to use and commercially exploit a work and can be freely transferred in the market.
The latter corresponds to the right of the author to be acknowledged and to oppose to any amendment of his/her work that could be prejudicial to his/her honor and reputation. This moral right is undeniable and not transferable.
Normally, copyright protection lasts for 70 years after the author’s death.
Why you should seek an expert’s opinion?
Any IP right is subject to peculiar and specific regulations, which are not always easy to interpret.
In order to avoid mistakes possibly jeopardizing the validity or the existence of the right itself, it’s highly recommendable to seek the advice of an expert who will be able to suggest and lead towards the most suitable solutions to every single need.
In fact, in some cases a wrong or inaccurate filing (for trademark, patents, designs etc.) or a mistaken and inappropriate choice of the distinctive signs to be used in the commercial activity, or even, a prolonged tolerance or inactivity in respect of illicit and counterfeiting conducts by third parties, can deeply affect and compromise years and years of hard work and commercial and technological investments.