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Avvocato Arlo Canella
In this article, we explain the main legal precautions for submitting design projects to companies, ensuring the effective protection of intellectual property rights and of creations:
Before submitting a design project to a company, it is essential to take certain precautions to ensure the protection of intellectual property rights.
First and foremost, it would be advisable to enter into a non-disclosure agreement (NDA) with the company concerned in order to protect the design from unauthorized disclosure and misuse. As a matter of fact, the NDA establishes a binding commitment between the parties, preventing the company from using, disclosing, or copying the design without the creator’s consent.
Should the company be unwilling to enter into a binding commitment, such as an NDA, it is important to consider registering the design with the Italian Patent and Trademark Office (UIBM) or the European Union Intellectual Property Office (EUIPO).
Registration provides legal protection that is independent of the signing of an NDA by the individual concerned, covering even cases of similarity resulting from an independent creation and facilitating legal action in case of abuse by the company concerned.
However, it is advisable to consult a lawyer specialized in intellectual property in order to assess which is the best strategy to adopt, also depending on the type of project to be protected: appropriate advice includes assistance with the presentation of the project and with the negotiation of possible assignment or licensing agreements to monetize the creation.
Filing an industrial design without legal protection can adversely affect the ability to obtain remuneration for one’s creation. Indeed, to be registrable and protectable in Europe, a design must meet the requirements of novelty and individual character (Articles 5 and 6 of EC Reg. No. 6/2002).
A presented/disclosed design, of course, would no longer be “new.” Therefore, submission of the design to the company, even if unintentional, could undermine these requirements, making it more difficult to obtain protection for the design and to be able to monetize it.
To avoid the negative consequences of so-called predisclosure, it is essential to take certain precautions. As mentioned above, a non-disclosure agreement (NDA) should be entered into with the parties involved in the confidential sharing process. This allows the parties to be obligated to keep information about the project confidential, protecting it from unauthorized disclosure-for example, at the prototyping or development stage, up to the time of registration.
It is useful, however, to be aware of the so-called “grace period” of 12 months granted by Article 7 of EC Reg. No. 6/2002. The European regulation stipulates that if design registration has taken place within the grace period, i.e., within 12 months of disclosure, the design application will still be valid and effective.
Be careful to avoid possible “complications”, it is advisable not to rely solely on the grace period. The best advice that I, as a specialized lawyer, can give you is to make an effort to track and preserve any communication to maintain the confidentiality of the design until registration.
In Europe, even those who do not register designs can obtain legal protection, provided the requirements set forth in EC Reg. No. 6/2002 are met.
The main differences between an unregistered and a registered EU design concern the duration of protection and the “strength” of protection.
An unregistered EU design offers a shorter term of protection, limited to 3 years from the date of disclosure of the design within the European Union (EC Reg. No. 6/2002, Art. 11). This protection covers only the unauthorized use of copies of the design that are the result of an intentional imitation (Art. 19).
A registered EU design, on the other hand, provides broader and longer-lasting protection. The term of protection can be up to 25 years, divided into renewable periods of 5 years each (Art. 12). Registration also provides more extensive protection against unauthorized use of identical or substantially similar designs, regardless of the intentionality of the imitation (Art. 10 and 19).
All in all, EU design registration is advisable to achieve more effective and lasting protection of creative work. This choice can positively affect the defense of intellectual property rights and legal action against possible infringement or counterfeiting.
The judgment of the Court of Justice of the European Union (CJEU) in the Cofemel case (C-683/17) ruled that an industrial design can be protected by copyright as long as it is original and represents an intellectual creation of the author. The ruling specifically states that copyright protection should not depend on additional requirements, such as the aesthetics or artistic value of the work.
Although opting for Copyright protection has some apparent advantages, in light of the inconsistent European regulatory infrastructure, this choice cannot be considered the best one.
In Europe, copyright under the principles of the Berne Convention arises without registration because it applies automatically from the moment the work is created. Moreover, lasting for the life of the author plus 70 years after his death is generally longer than registered design right.
However, there are also disadvantages to choosing to rely solely on copyright. The protection offered may be more difficult to enforce in court, as the author will have to convince the judge that the work is sufficiently creative and original.
Copyright also does not provide any formal presumption about the validity and ownership of the title, as is the case with the registration certificate. In business practice, formal certification is often imperative for going through customs, on web portals, and in many other practical situations.
Practitioners tend to combine design registration with other types of protection depending on the value attributed to the individual design and its actual relevance to its author or to the business.
Avvocato Arlo Canella
