The Protection of Shapes
The intellectual and industrial property world offers several answers to this question. It is possible to abstractly protect the whole shape of the product, their single components and also the external packaging features. Therefore, depending on the characteristics of shapes to be protected and the goal to be reached in terms of protection, the company may choose among several types of rights:
The most natural protection for shapes is offered by industrial designs. In fact, this right was created precisely to protect the external shape of a product.
In order to be protected, the shape should respect the following essential requirements:
- Novelty: it shouldn’t be identical or similar to the shape of another design previously spread or registered (NOTE: a design can be registered within 12 months after its first disclosure by the owner, the so-called grace period);
- Individual character: it should produce in the so-called informed user (that is to say a subject having enough knowledge of the concerned sector, someone in between an expert and a usual consumer) a general impression which is different from that given by any other design or model previously disclosed;
- Lawfulness: the shape shouldn’t be in conflict with public decency and order, nor reproduce signs, emblems or symbols of public interest.
The registration lasts for 5 years, which are renewable until a maximum of 25 years. It is possible to file oppositions to the registration in all countries where the right is valid (for example, in Italy if it is a national application and in Europe if it is a community application).
Moreover, with regards to the European Union, a special protection is granted also to all those unregistered shapes showing the above-mentioned requirements. These shapes are protected for 3 years starting from their first commercialization in the EU territory (so-called unregistered design).
Anyways, it is worthwhile noting that designs protect shapes that are registered in their comprehensive aspect.
Therefore, if the aim is to protect – besides its “global” appearance – the peculiarities of the product (as long as they respect the requirements of novelty, individual character and lawfulness) it is always advisable to file more than one application.
On the other hand, it is NOT possible to register as design those shapes depending only on the technical purposes of the product, or being necessary to their functioning.
If a design with this appearance is registered, then the bag’s shape in its entirety is protected, meaning that for example products reproducing only one of its characteristics (such as the closure’s shape) and having relevant changes thus giving a different general impression, might not be considered as counterfeit.
By registering – besides the bag’s shape in general – also the shape of some of its details (such as the closure’s shape), these will benefit from a more specific protection.
This design was cancelled because depending on the technical function only.
Shapes can become valid trademarks, too – be they de facto trademarks or registered ones.
A trademark lasts for 10 years and is abstractly renewable with no time limits.
The shape mark, in order to be effectively registered or anyways opposed to third parties, must respect the requirements established by the Trademark Law with some specific limitation, such as:
- Distinctiveness: it is the trademark’s capability to distinguish products or services from others; in other words, the trademark cannot be a generic denomination or a descriptive indication for the products/services it identifies.
- Novelty: it is the absence of identical or similar signs in the official register or in the market.
- Lawfulness: it is the conformity to public order and decency.
The regulation expressly excludes to possibly register as trademarks those product’s shapes which are necessary to obtain a technical result or otherwise giving the products a substantial value.
The idea of such limitation is to exclude from the registration the external aspect of a product, every time it is considered by the public as a positive quality in itself rather than a distinctive sign.
In other words, the aim is to avoid that the never-ending exclusive status granted by the trademark is extended to forms, thus enlarging indefinitely the protection scope.
Therefore, the guideline to establish whether a non-general and non-functional form can be registered as trademark is to clarify whether or not it is suitable to carry out mainly a distinctive function, namely the indication of the origin of the product from a specific company.
If used adequately, shape trademarks guarantee the company the protection of its marketing investments.
Valid shape mark: the consumer associates this form to the company (Nivea), the form has a distinctive function. No competitor can imitate this form for other moisturizing creams packagings.
NON valid shape mark: this form doesn’t have a distinctive function, but it gives a substantial value to the product.
With judgement n. 5140 published on November 12th 2019, the Court of Turin confirmed that the three-dimensional trademarks owned by Ferrero S.p.A. were counterfeited by a competitor’s product.
Industrial products’ forms, in some cases, can be protected by copyright, lasting for 70 years after the author’s death.
In particular, industrial design’s products should respect the following requrements:
- Creative character: it is the expression of the author’s personality and creativity. It requires that the work is not a reproduction or a copy of somebody else’s work and that it has some personal elements differentiating it from others;
- Artistic value: it is the acknowledgement that the object has received in the cultural and institutional environments regarding the actual existance of its aesthetic and artistic qualities, thus placing itslef in the so-called high-end designs, which is demonstrated by the displaying in museums and exhibitions, publication in specialized non-commercial magazines, participation in artistic events, awarding of prizes, articles by expert of the sector.
In general, the evaluation of the evidences is carried out with restrictive standards, since in the industrial design field the author’s protection is to be considered an exception rather than a rule.
With the judgement of June 20th 2019, the Court of Bologna acknowledged the author’s protection for Ferrari 250 GTO.
Lastly, it is worth recalling that, even with no industrial rights, the imitation of a product’s aspect or its packaging, where it shows external characteristics which are easy to identify and therefore are suitable – for their distinctive capacity – to link the product to a specific company, constitutes an infringement and is punishable in compliance with the unfair competition regulation as servile imitation (art. 2598 c.c.).
In short, in order for an imitation to be acknowledged as such, the mock should be about those whimsical and discretionary characteristics of the competitor’s product, rather than those depending on a technical need or those very common in the sector (such as peculiar colours, trademark, handles’ shape for machineries).
If such imitation is abstractly suitable to generate confusion in the market between the products of two companies or the companies themselves, the entrepreneur subject to imitation can appeal to the court requesting the interruption of such illicit conduct and a possible damage compensation.