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08 November 2010
Legislative Decree 131/2010, which amended the Code of Industrial Property and came into force on September 2 2010, has brought Article 239 of the code into line with the EU Design Directive (71/98/EC). Article 239 sets out a transitional regime for works that were created before copyright protection for industrial designs was introduced on April 19 2001.
It has taken nine years and five legislative interventions for Italy to recognise that industrial designs which were created before 2001 benefit from full copyright protection. The new Article 239 states that third parties which started to manufacture and sell products based on industrial designs before 2001 cannot continue to do so.
Although a draft legislative decree had previously been introduced, it became clear that the Italian legislature could no longer postpone the amendment of Article 239 when the EU advocate general delivered an opinion in Flos SpA v Semeraro Casa e Famiglia SpA(1) on June 24 2010. The case had been referred for a preliminary ruling on the interpretation of the directive. The main issue was the compatibility of the Italian transitional regime with EU law. When proceedings started, the regime limited the protection afforded to industrial designs by allowing third parties that had started to manufacture and sell products based on industrial designs before 2001 to continue to do so for a period of 10 years.
The Court of Milan requested a preliminary ruling following a request by an Italian trade association which was involved in a case concerning the infringement of a classic Italian design - the Flos Arco lamp, created by the Castiglioni brothers in the 1960s.
At a hearing on April 22 2010 before the European Court of Justice, the European Commission argued that Italy's transitional regime contravened EU Directive 29/2001/EC. The directive harmonised the rules on the period of copyright protection and limited protection for parties that manufactured products based on industrial designs before 2001, expressly stating that they should not be allowed to carry out their activities. The advocate general, extending this rationale, stated that:
"Article 17 of [the EU Design Directive] must be interpreted as prohibiting the adoption of a national law which provides that designs and models [which] entered in the public domain before the entry into force of the national rules implementing the directive do not benefit from the protection granted by copyright law."
The advocate general further stated that third parties which legitimately manufactured and sold products based on industrial designs before 2001 may be granted only "a reasonable transitional period during which… they can continue to sell the products". The 10-year period under Italian law was deemed to be excessive.
The new Article 239 incorporates this approach and now provides as follows:
"Third parties that manufactured or marketed, in the 12 months prior to April 19 2001, products based on industrial designs... in the public domain are not liable for copyright infringement for activities carried out after that date, limited to products manufactured or purchased before April 19 2001 and those manufactured in the following five years, provided that such an activity has remained within the limits of prior use."
Therefore, copies manufactured in Italy after April 19 2006 (and those imported after April 19 2001) will be deemed counterfeit in accordance with the directive.
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