In the world of wine, in particular, it has become increasingly important to protect not only the production process but also the aesthetic aspect of the final product. In fact, there is a growing tendency for companies in the sector to invest in creative forms that are able to distinguish their products and attract consumers.
It is therefore important to have a clear picture of the protection tools offered by the legal system, both national and European.
In order to protect the shape of a product, one of the following tools can be used, depending on the circumstances: (1) the model, (2) the three-dimensional trademark, (3) unfair competition for slavish imitation and (4) copyright. It should also be emphasized that, given the diversity of functions, it is also possible to combine the various forms of protection.
Designs and models
In the field of intellectual property, the protection of the external appearance of the product is entrusted to the legal institutes of the model and design. The term drawing is used in the case of two-dimensional images (such as decorations, lines and colors of a product), while the term model refers to three-dimensional shapes (such as the shape of a bottle or a corkscrew). The design or model aims to protect only the aesthetic aspect of the product, regardless of its technical and / or functional characteristics.
National protection is flanked by that of the European Union provided for by Regulation (EC) no. 2002/6 on Community designs and models. It is a unitary title valid in all member countries of the European Union, which is required to coexist with the national design or model. In this way, through a single application, it is possible to obtain a more extensive protection within the Union, with a reduction also in the costs and times that would derive from the presentation of individual applications. The conditions for the protection of the Community design or model are substantially identical to those provided for by domestic law. In this case, too, individual character and novelty are required. The aim is to guarantee uniform discipline within the member countries regardless of the instrument used.
As for the national design or model, the protection granted is 5 years, which can be extended up to a maximum of 25 years.
The Regulation also provides for a form of temporary protection for the unregistered Community design or model. In this case, the exclusive right derives directly from the existence of the design or model, without the need for any registration. The protection is limited to 3 years and from the date of first disclosure of the design or model within the European Union. The protection is then less intense as it allows you to oppose only copies of the product that are not the result of a creative coincidence.
Given the temporary nature and the absence of particular formalities, this type of protection is particularly useful in the case of products intended to remain on the market for a short period of time. In this way, companies can still benefit from protection against copying of the disclosed product, without having to bear the costs associated with the registered design or model.
The three-dimensional brand
In addition to the design and model, another protection tool is represented by the three-dimensional trademark. The European Union has also intervened in this area with a process of harmonization of national laws on trademarks in order to guarantee uniformity of protection in all member countries.
Domestic law provides for the possibility of registering the shape of the product or its packaging as a trademark, if the requisites provided for by law are met, giving the owner the right to prevent third parties from using the trademark without its consent or filing a trademark. equal or similar successor for identical or similar classes of goods or services. However, it should be noted that our legal system also protects (but to a lesser extent) the so-called de facto trademark, thus meaning the trademark not registered but used by the company to distinguish its products or services. While the registered trademark enjoys an absolute presumption of ownership, the factual one must be demonstrated. This means that the owner will be required to prove the reputation of the trademark and its effective use in a given territory or at national level.
It is precisely in relation to this phenomenon that the difference in functions between the design or model and the three-dimensional mark can be grasped. The first concerns the attractiveness of the form considered in itself, that is, inherent in the appearance of the product. The second, on the other hand, refers to something more, namely the ability of the form to indicate to the consumer the manufacturing company and therefore the commercial origin of the product. It follows that the shape, where the prescribed requirements are present, can be protected initially as a design or model (also benefiting from the European legislation on unregistered designs or models), and, subsequently, once the distinctive capacity on the market has been acquired, also as a brand.
The classic example is that of the glass bottle of Coca-Cola 010532653, which in itself has a shape that is not suitable for being perceived by the consumer as a real distinctive sign. However, through the use and massive marketing activity, over the years the Coca-Cola bottle has acquired its own popularity and distinctiveness, or rather a secondary meaning. To date, in fact, the consumer is able to grasp the commercial origin of the product only from the shape that characterizes it.
On the other hand, in the case of the Bottega Gold 011531381 bottle by Bottega spa, the existence of the distinctive ability of the brand was recognized ab origins, mainly due to the shape of the bottle known as "collio" and the golden mirror color, as well as the presence of the letter "B" and a satin flame drawn on the front of the bottle. The trademark has been registered as three-dimensional but has characteristics that relate as much to the shape as to the graphics. This means that the verification of the distinctive capacity must concern the trademark as a whole and not be limited to the constitutive elements considered individually.
Registration as a trademark is excluded if the shape is imposed by the nature of the product or is necessary to achieve a technical result or, again, is such as to confer a substantial value to the product. The latter type of impediment occurs in the event that the shape presents such an attractive capacity as to substantially affect the consumer's choice at the time of purchase. The rationale is to avoid the formation of monopolies with an indefinite duration on forms for which the legislator has provided for specific protection instruments with a limited duration in time, such as registered designs and models. Unlike the design or model, the protection of the trademark has a duration of 10 years and is renewable indefinitely.
The three-dimensional trademark is also protected by European legislation which provides for the so-called European trademark, currently governed by Regulation (EU) no. 2017/100. As for the design or model, the aim is to create a system of trademark protection at the European Union level, which goes alongside the protection already provided at national level by the individual Member States. The company is free to choose whether to apply for protection solely through the national trademark or the EU trademark or whether to use both.
Slavish imitation
In the context of the distinctive signs, the so-called unfair competition for slavish imitation provided for by art. 2598 of the civil code, which allows the entrepreneur to prohibit competitors from imitating the external distinctive characteristics of their products to the extent that it is capable of misleading the consumer about the commercial origin of the products. For the purposes of the applicability of the rule it is therefore necessary, on the one hand, the distinctive character of the form (in a similar way to what is described in the previous paragraph), on the other, the suitability (concretely) of the conduct to create confusion between consumers, without the need for actual damage, which can even be only potential.
The discipline on unfair competition also provides for another typical hypothesis which is that of the appropriation of merits (Article 2598, No. 2, of the Italian Civil Code), applicable in the event that there is an exploitation of the notoriety and success of the product of others, or an exploitation of the work done by others in order to take an undue advantage.
Copyright
Finally, the cumulation of protection is now also admitted from the point of view of copyright. It is in fact possible that the same shape can be protected both as a three-dimensional model or trademark and as an intellectual work on the basis of copyright.
However, copyright protection has a narrower scope, as it is limited to works with a creative character and artistic value. In practice, this means the protection of copyright is reserved for design works, that is to say those products that present original forms that are appreciable from an artistic point of view, beyond their use in the reference industry. Think of the well-known Anna G. corkscrew, designed by architect Alessandro Mendini, depicting a female silhouette and dedicated to a real woman, the designer Anna Gili, who has become an iconic object of contemporary design precisely for its particular characteristics and value. artistic that encompasses.
The creative work is automatically protected by copyright at the very moment of its creation. No particular procedure is therefore required. From the work derive both moral rights (such as the right to paternity of the work) and patrimonial rights (ie the rights of economic use of the work).
