Protecting designs is an added value for any company’s image, taking on a key role in positioning in a highly competitive market.
Thus a company must be able to differentiate its product from the competition, ensuring that it is the consequence of the perfect and original combination of functional and aesthetic aspects: design (or model).
Being the result of the designer’s creative work and presenting its distinctiveness and novelty, the design or model is subject to the legal protection of the Industrial Property Code (Italian Legislative Decree no. 30/2005- hereinafter the “Code”) and Copyright Law (Italian Law no. 633/1941).
Design protection requirements
As part of the protection of the Code, in order to be registered, a design or model must meet the following requirements:
obtainable if ‘no identical design or model has been disclosed before the registration application filing date‘ (or the priority date, if claimed).
A model or design whose “characteristics differ only for irrelevant details” – art. 32 of the Code – is considered “identical”.
2) individual character
“the general impression that it generates in the informed user differs from the general impression generated in the same user by any design that has been disclosed before the registration application filing date” – art. 33, par. 1 of the Code,
(or priority date, if claimed).
The law has been interpreted in various manners to define its protection, also with respect to the relationship between individual character and distinctive capacity.
In fact, the former would conceptually refer to form as a typical product characteristic, for which it is the aesthetic aspect that influences the consumer’s purchase choice, while distinctive capacity refers to the actual message that the trademark intends to convey.
The optimal situation would thus see a distinction between categories of forms with distinctive capacity perceivable by the average consumer, and therefore registrable as a trademark, and those where the evaluation parameter is related to the informed user.
In any case, the main design requirement is expressed by the “individual character” whose verification, for the purposes of registration, includes the application of two parameters:
- the “margin of freedom“, from which the “author has benefited in creating the design or model” (Article 33, par. 2, of the Code);
- the “informed user“.
In particular, this requirement has the task of significantly impressing the general view that the “informed” user has of a particular product, in its specific aesthetic form, and therefore the different perception that the person has compared to the average consumer.
But what is meant by informed user?
Who is the informed user in design protection?
The informed user is the expert consumer of design who knows the market, who can perceive with “diligence and sensitivity”, from a global vision of the product compared to another, even the smallest aesthetic differences which could in fact escape the average consumer.
It is the person who uses the products and stays up-to-date as regards their characteristics and their development.
This person is thus placed between the average consumer and the technical expert or designer.
Therefore, the informed user is able to express his own favourable opinion on the recognition of the individual character compared to the average consumer, but certainly less effectively than an expert in the field.
Design protection as a market strategy
Consequently, design protection is not an end in itself: the design must not merely present itself as innovative, individual creations protected in the legal field, but must be accompanied by a market strategy (so-called market approach).
The objective is to implement a protection of the aesthetic form with a specific attractive function for the consumer, so as to capture his attention on the design product and induce him to purchase it.
Therefore, with its “aesthetic appeal”, design also becomes a marketing tool aimed at customising the product and developing effective communication strategies to gain a competitive advantage on the market.