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Is there legal protection for those who do not register?

Published in: Copyright and Authorship
by Arlo Canella
Home > Is there legal protection for those who do not register?

Some questions you just don’t have the courage to ask anyone, least of all your lawyer.

At the end of an appointment with a lawyer who has just finished explaining to us the advantages of applying for trademark, patent or other creativity work protection, one does not have the courage to ask…

If you don’t file, what happens?

To put it in a nutshell, here is the answer on the basis of Italian and Community Law, depending on the legal institution involved.

As far as trademarks are concerned, the consequences are not so serious… A trademark is a distinctive sign, it is the name or figure that serves to recognise the company on the market.

The law also grants the unregistered trademark a certain form of protection. The protection of the so-called de facto trademark. This would be protection in all respects equivalent to that of the registered trademark, were it not that before being able to activate it (against other abusive users of the same or similar subsequent trademarks or against subsequent registrants) we would be required to prove to the judge precisely since what date we began to use the trademark as well as the intensity of the use of the trademark, also in territorial terms.

As a matter of fact, should someone file the same trademark with the Italian Patent and Trademark Office, for example, at a later date than my de facto trademark, he would have the right to continue to use the trademark throughout the national territory, while I would have to settle for the limits of my territorial (local) pre-use. It is true that a de facto trademark can in theory reach an intensity of use with national relevance in a short period of time… but it is also true that such intensity of use is not so obvious.

Wouldn’t it be easier to produce a filing certificate to the judge rather than the time and trouble of gathering all this evidence on the date and intensity of use?

In addition, a filed/registered trademark (as it should be) is more easily marketable. I am referring in particular to the hypothesis of assignment, licensing or (to use startupper terminology) exit

Is trademark registration too expensive? Well, it depends on the professional you turn to and requesting a quote costs nothing. If we want to obtain an indisputable monopoly right on the use of a sign, the very sign that we have elected as the synthesis and symbol of our entrepreneurial activity, it is a good idea to get busy following the regulatory practice.

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When it comes to the case of patents for invention, the ignorance becomes inexcusable. Here is why.

A patent for invention, oversimplifying, is a novel solution to a technical problem. According to the law, in addition to susceptibility to… industrial application, there are two requirements for obtaining a patent for invention: 1) inventiveness and 2) novelty. Inventiveness means that the solution adopted must not be trivial to a technician in the field. In other words, the solution must represent a “sufficient” step forward compared to the state of the art.

Novelty, on the other hand, means that the invention must not be known. And here comes the kicker, the invention must be “new“, in the sense of “not known” to anyone, worldwide.

In other words, telling (disclosing) the patent before filing destroys novelty and renders it null and void. The End. 

If a valid patent is to be obtained, the secret must be kept until filing. It is permissible to tell/show the invention (and the papers that illustrate it) under proper (and written) secrecy so care must be taken.

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Switching to a different subject, dear designers, let’s talk about Design.

Design is the “outer shell” of products, it consists of their aesthetic value. Products, packaging, product parts and modular products, graphic interfaces (those of Internet sites, for example), icons (and other graphic materials for the Web produced by designers), fonts (character sets), maps… everything about a product that can be sensitively perceived by the user can be protected as a design, through a design application.

According to the European Community regulation, even a design that has not been the subject of a deposit has its own specific protection… which lasts 3 years (three) from the first disclosure to the public. Simply put, a piece of furniture presented at the Salone del Mobile exhibition in Milan will receive protection for 3 years (only three) counting from the first presentation to the public.

A registered design, on the other hand, is granted protection for up to 25 years (from filing). At the end of protection (by Law) anyone may reproduce the protected design. It is better to register, isn’t it? Perhaps the only exception to the opportunity to file is for those design products that are strictly seasonal (less than 3 years). On top of that, in Italy the filing fees for a design product amount to just 50 Euro (exactly), while those required for an entire collection of products (up to 100 items) belonging to the same product category only amount to 100 Euro.

In the case of design, the law provides for an additional 12-month grace period.  If you have already disclosed your design project… and now you fear that you will have to be happy with three years of protection… don’t worry, the law allows you to file your product within 12 months of its first public disclosure, so you will go from 3 to 25 years of protection (saved in the nick of time).

If you have always been confident that all you had to do for Design was to put a (c) in Copyright, you were very wrong. Italian copyright law provides that for industrial design products… creative character is not enough (see Art. 2 no. 10 of L. 633/1941). The Judges will also verify the existence of the so-called artistic value (identifying with the community), based on parameters that are as objective as possible. Up until now, this protection has only been granted to Design Classics (Panton, Castiglioni, Le Corbusier…), so if you are a beginner designer, the only reliable solution provided for by the law is a design deposit (which, as we have seen, is rather cheap anyway).

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Last but not least, dear creatives, let’s turn to Copyright.

Copyright does not require registration to be legally protected. All you have to do is be creative and create… protection arises automatically with creation: “intellectual works of a creative character belonging to literature, music, figurative arts, architecture, theatre and cinematography, whatever their mode or form of expression, are protected under this law“.

There are no limits. There are no exhaustive lists and categories… so abstractly anything can fall under copyright protection (with the exception of special and detailed rules).

For the purposes of this brief article, I just wanted to emphasise how crucial it is, however, to preserve proof of creation. Before a judge, it can become very difficult to prove the date on which I created… the work. Many copyright cases revolve around this element: the date.

Whoever is able to prove that he created first is likely to be the one who actually created.

That is why it has become legendary… the registered letter sent to self. Today, there are more advanced systems (certified, digital and on-line) that give these kinds of results more quickly, cheaply and effectively.

To sum up, it is really difficult to spare the “registration” because it represents an essential strategic moment.

Indeed, there are those who limit themselves to being “creative” and those who prefer to commit themselves to turning dreams into reality.

© Canella Camaiora Sta. All rights reserved.
Publication date: 23 January 2017
Last update: 7 September 2023

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Avv. Arlo Cannela

Avvocato Arlo Canella

Managing Partner of the Canella Camaiora Law Firm, member of the Milan Bar Association, passionate about Branding, Communication and Design.
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