Focus on Intellectual Property
Intellectual Property - General Principles
Function of Intellectual Property (IP)
Reward the efforts of authors, investors, inventors; encourage investment in creativity, research and innovation; promote public dissemination of results of creative/inventive activity.
IP rights are fairness mechanisms whose requirement is to be subject to concession.
What is intellectual property?
IP consists of rules protecting intangible assets resulting from human creativity or invention.
Major components:
Industrial property: trade marks and other distinctive signs, geographical indications, designations of origin, designs, patents, utility models, topographies of semiconductor products, know-how, and new plant varieties.
Copyright: music, literary works, databases, software, and artistic works.
Main IP rights (overview)
Patent: protection for technical innovations/solutions.
Trade mark: distinctive signs distinguishing goods/services.
Utility models: new shapes that improve efficiency or functional comfort.
Copyright: protection of expressive works and related rights.
Confidential information.
Industrial design: outward appearance of an element with no functional value.
Copyright vs Patent vs Trademark (Differences at a glance)
Copyright: protects expression, not ideas.
Life of author + 70 years.
Patent: protects ideas reduced to practice.
20 years from filing.
Trademark: protects goodwill associated with a sign.
10-year increments; renewal.
General concepts: Fair use provisions, works-for-hire, automatic protection vs registration, originality thresholds, and defenses.
Possible forms of IP exploitation
Direct exploitation: marketing IP-rich products/services.
Licences: licensing the use of IP in home country and abroad.
Alienating IP rights: assignment/licensing in foreign jurisdictions.
Portfolio management: combining the above options.
International conventions and regimes
Paris Convention for Protection of Industrial Property (1967; updates 1989).
Berne Convention for the Protection of Literary and Artistic Works (1971; updates 1990).
Trade-related aspects of IP Agreement (TRIPS) (1994; updates 1995).
WCT (WIPO Internet treaties) – digital agenda.
PCT (Patent Cooperation Treaty) (2004).
These form the basis for national, regional, and international IP protection and cooperation.
Paris Convention: scope
Protection for industrial property; governance by domestic legislation.
Berne Convention: protection for literary and artistic works; governed by national legislation.
TRIPS: minimum standards, enforcement provisions, most-favoured-nation treatment, and stronger enforcement procedures.
World Intellectual Property Organization (WIPO) treaties and Madrid System for international trademark registration.
National and regional registration systems (brief)
National: e.g., Italy’s Industrial Property Code (Legislative Decree No. 30/2005) – UIBM.
European: Community Trade Mark / EU trade mark (CTMR) valid in 27 EU countries – EUIPO.
International: Madrid System – WIPO; regional/national implementations under various treaties.
International phase to national phase (e.g., Patent Cooperation Treaty process).
Basic principle of international convention (TRIPS 1(1))
“Members may but shall not be obliged to implement more extensive protection in their law than is required by the agreement.”
National treatment principle
Each member shall accord to nationals of other members treatment no less favourable than it accords to its own nationals.
Italian legislative context (Industrial Property Code)
Industrial property rights are acquired by patenting, registration, or other ways provided by the code.
An administrative act constitutive ascertainment of the right is required for IP rights; copyright arises with the creative act alone.
Patenting: inventions; utility models; new plant varieties; designations of origin; brands; drawings and models.
2. Trade marks
What are distinguishing marks?
In market competition, a company must be easily identifiable to avoid confusion that harms goodwill.
Distinctive signs allow identification of:
The enterprise (company)
The products of the same brand
The premises where production takes place (sign)
Protection grants exclusive use with power to prevent others from using them.
The company (brand) and domain names
The company name identifies the business entity and must contain at least the surname or initials of the entrepreneur.
The uniformity of distinctive signs: similarity between business signs and marks may create likelihood of confusion; vice versa, signs similar to pre-existing company/domain names may be invalid if they cause confusion.
Principle of Uniformity of Distinctive Signs (Art. 22 IPC; Art. 12 IPC)
It is prohibited to adopt a company name/sign/domain that is identical or confusingly similar to an existing mark if it would cause confusion among consumers due to identical or similar business activities.
Conversely, a mark is invalid for lack of novelty if it is identical/similar to a sign already known as a company name or domain name in the course of trade with likelihood of confusion.
What is a trade mark? (Defining features)
A brand name, a sign to distinguish goods/services produced or sold by one enterprise from others.
Graphically representable; may consist of words, names, drawings, letters, sounds, product shape, packaging shape, color combinations, or shades.
Types of marks (Denominative, Figurative, Colour, Three-dimensional)
Denominative: wording only (protects the wording, not appearance).
Figurative: logo/image; protects words and appearance.
Colour marks: color combinations that function as marks.
Three-dimensional marks: shapes or packaging that function as marks.
Service marks: distinguish services; Collective marks and Certification marks.
Well-known marks: stronger protection.
Tradename (Brand name).
Functions and value of a trade mark
Functions: identification, quality indication, origin, and advertising/investment function.
Advertising function emerged as a recognized function post-1992 reform; marks can be acquired/registered by non-company owners; branding as an economic asset.
Brand as a tool for licensing, franchising, and reputation-building.
Interdependence concept: likelihood of confusion is a function of similarity of marks and similarity of designated goods/services; high similarity in one dimension can offset differences in the other.
Distinctiveness and registration requirements
Distinctive character: mark must distinguish goods/services; not merely descriptive.
Novelty: not identical/similar to earlier marks or other sign that causes confusion; non-descript terms.
Lawfulness: not contrary to law, public order, or misleads about origin or qualities.
Article-based protections (Italian context)
Art. 7 (Object of Registration): signs capable of being graphically represented; words, names, drawings, sounds, shapes, colors; capable of distinguishing goods/services.
Art. 8: Portraits, names and well-known signs – consent required for portraits; names may be registered depending on consent and potential reputation impact.
Art. 9: Form marks – shapes that are registered; shapes may be registrable if not strictly functional.
Art. 10: Coats of arms – no protection as marks in some contexts; public interest considerations.
Art. 11-12: Collective marks and novelty; and the notion of “ownership” of a collective mark by an association or public body; use rules and governing regulations.
Art. 13: Distinctive capacity – signs devoid of distinctive character or generic/descriptive signs cannot be registered; but signs may acquire distinctiveness through use.
Art. 15: Transfer, licensing – licenses may be exclusive or non-exclusive; control of quality and usage; license must not deceive.
Art. 23: Trademark licensing and transfer rules; protection against misleading characteristics.
Art. 7–23 collectively cover object, use, transfer, and enforcement.
Distinctive and descriptive examples/cases
BIMBO (EU General Court, 18 March 2016): a simple colour/name combination may lack distinctive character for certain goods.
Adidas three-stripe mark (ECJ, 17 February 2016): three parallel stripes can be highly distinctive depending on context and product; connotes strong visual similarity that may result in confusion.
Coca-Cola three-dimensional shape: a 3D mark found lacking distinctiveness for certain goods due to being non-distinctive beyond product shape.
Vedo bene (example of descriptive signage for glasses) found non-distinctive due to descriptive characteristics.
Centro Commerciale dei Laghi; Pulimatik (Roma, 2009) – names/signs descriptive or evocative and assessed for distinctiveness.
Collective marks and quality certifications
Collective marks distinguish goods/services of members of an association from others; used to guarantee origin, nature, or quality.
Eligibility: associations or public law entities; requires Rules of Use and governance.
Quality certifications: independent controls and product specifications; conformity attested by third-party bodies; voluntary vs regulated certifications (EU/Italian regulation).
Regulation of organic farming labels (EU Regulation 834/2007): terms like “bio”/“eco” require compliance with regulation; inspections, impartiality, and accreditation required for certification bodies.
How to protect collective marks
May be national or Community registration (Art. 64 CTMR).
Community protection requires registration; use must be governed by Rules of Use.
Rules of Use define membership, usage conditions, sanctions, and controls.
Enforcement and protections for marks
Legal safeguards: judicial protection, information requests, seizures, injunctions, damages; customs protection; criminal protection.
Civil/administrative procedures, including preliminary emergency measures.
Judicial protection and remedies (Italy)
Forum: where the infringer resides or where infringement occurred; emergency measures available (information requests, injunctions, seizures, descriptions).
Damages: compensatory damages, loss of profits, and possible restitution of profits gained by the infringer.
Requests for information (Art. 121-bis IPC): identify origins and distribution networks.
Seizure (Art. 129 IPC): seize infringing goods, production means, and evidence; must show fumus boni iuris and periculum in mora.
Inhibition (Art. 131 IPC): injunction to stop infringing conduct, possible penalties for non-compliance.
Description (Art. 128 IPC): obtain inspection/description of infringing objects and production methods; preserves evidence.
Damages and enforcement under EU directives
Directive 2004/48/EC updates allow emergent damages, lost profits, and a global royalty-like amount (price of consent) for infringements.
Customs protection under Reg. 1383/2003; enforcement of rights at the border.
Criminal protection: Italian Criminal Code articles 473, 474 concern counterfeiting and sale of counterfeit goods; penalties for manipulation of signs.
Priority and search considerations in trademark filing
Pre-filing advice: ensure eligibility; conduct availability/search in relevant territory; consider domain name availability.
Priority searches: word/figurative marks, identical/similar marks; cross-country or regional searches; assess likelihood of confusion.
Necessary elements for evaluation of a mark (costs, advertising, domain, licensing, turnover, financials, market data).
The role of the General Public Register (RPG) for copyright (Italy)
RPG maintained by the Ministry of Cultural Heritage and Activities (MiBAC) – Copyright Office.
The RPG is a register; not constitutive of copyright but provides administrative publicity; deposition involves forms, fees, and documentary requirements.
Registration can aid in proving authorship and dates in dispute resolution.
3. Copyright, online protection, piracy, enforcement
Regulatory context and core works
Civil Code – Book V: IP rights; Arts. 2575-2583.
Law No. 633 of 22 April 1941 (Copyright Law) and implementing regulations (Royal Decree No. 1369 of 18 May 1942).
Main national legal references include Legislative Decree No. 373/2000 (implementation of EU Directive on conditional access services) and Legislative Decree No. 70/2003 (e-commerce and information society).
MiBAC – Directorate General for Libraries and Cultural Institutes.
What is protected and how
All intellectual works of a creative nature are protected by copyright law; automatic protection upon creation; works of literature, music, visual arts, architecture, theatre, cinematography; computer programs and databases; mere ideas are excluded (Art. 1, Law 633/1941).
Scope of protected works (Art. 2): literary, dramatic, scientific, educational, religious works, including computer programs and databases with originality; protection applies to the form of expression, not the underlying ideas.
Databases are protected as compilations if there is originality in the selection or arrangement; contents of databases may be unprotected if not original.
The General Public Register of protected works (RPG)
Maintained by MiBAC’s Copyright Office; provides public access to registrations; includes author, title, year, registration date; used as evidence of authorship.
Filing formalities include two copies of forms and a revenue stamp; fee around €32 for basic registration.
The RPG enhances evidentiary value but copyright arises automatically with creation; formal filing is not constitutive of copyright.
How to protect works and online protection
Online works are protected similarly to printed works; copying/unauthorized use is infringement.
Piracy types include digital piracy (online file-sharing, streaming), physical piracy (duplication of physical media), and public performance piracy (clubs, hotels, etc.).
Internet Service Providers (ISPs) play a role in enforcement; case law increasingly imposes editorial responsibility and active roles for platforms that host and distribute user-generated content (UGC).
UGC platforms, data, and active role of platforms
High volumes of UGC: hundreds of hours uploaded per minute, millions of pieces of content uploaded daily; billions of page views and user actions.
Live streaming and social broadcasting: services like Periscope, Facebook Live; platforms enable broad sharing of content.
ISPs’ responsibilities: after notices from rights holders, platforms may need to remove or restrict access to infringing material; in some cases, platforms with active involvement may lose safe harbour protections under the E-Commerce Directive for mere hosting.
Active role assessments by courts consider platform organization, cataloguing, and editorial intervention when judging liability.
Tools for combating online piracy
DMCA-style Notice and Take Down frameworks as a model for notices, while EU approaches emphasize transparency, fair remuneration, and enforcement.
Content ID (YouTube): copyright holders upload reference files; the system scans uploaded videos against a database; results offer options: leave, block, or monetise content.
Rights Manager (Facebook/YouTube ecosystem): allows rights holders to upload their library, set usage permissions, identify matches, and create whitelists for permitted pages.
The European Commission’s package for copyright in the Digital Single Market
Focus Directive on Copyright and Related Rights in the Digital Single Market (DSM Directive) – approved March 2019; entry into force 20 days after publication; Member States have two years to transpose.
General objectives:
Update the copyright framework to reflect digital use; adapt exceptions (educational use, research, preservation).
Introduce equitable remuneration and transparency to close the value gap between online platforms and content creators.
Rebalance intermediaries’ market position; require licensing and better information for rightholders.
Article 17 (formerly Article 13) – ISP liability for content-sharing platforms that store and allow users to upload large quantities of content to profit from it (e.g., YouTube, Facebook).
Platforms must obtain authorization from right holders (e.g., via licences) to use protected content.
Safe harbour: platforms cannot rely on the general hosting safe harbour unless they meet requirements; burdens on platforms to demonstrate efforts to obtain authorization, apply preventive measures, and stay-down where appropriate.
Exemptions: small platforms (less than €10 million annual turnover, under three years in operation, lower traffic) may be exempt from some duties; some non-profits and open platforms may be fully exempt.
If an active role exists in content management/distribution, liability waivers under the safe harbour are reversed; a platform may be liable unless it acts in good faith to obtain authorization and enforce rights.
When licensing agreements exist, user-upload sharing may be covered by licenses; exceptions to existing copyright exceptions continue to apply.
Other measures in the DSM package include priority licensing mechanisms (collective/extended licenses) and negotiation frameworks to facilitate licensing and content access.
Insider notes on enforcement and platforms
The shift from a purely hosting liability model to one recognizing editorial responsibility for platforms.
Tools and mechanisms aim to balance access to protected works with fair remuneration for rights holders.
Important practical elements for copyright protection
Copyright arises automatically upon creation; formal registration aids evidence but is not required.
The RPG provides administrative evidence of authorship and dates.
Infringement types include counterfeiting, plagiarism, and piracy; piracy spans online and offline contexts.
For enforcement, a mix of civil, administrative, and criminal remedies exists, including search and seizure, injunctions, and damages.
Case examples and takeaways
Online identity and branding: trademark cases illustrate the importance of distinctiveness and the risk of descriptive phrases becoming generic.
Descriptive marks and generic terms: signs that lack distinguishing character are unlikely to be registered or protected.
Colour marks can attain distinctive character if they can be represented and perceived as indicating a specific product or service, but require objective identification codes and clear representation (Libertel principle).
Practical implications for students and practitioners
For brands: invest in distinctive marks; ensure clear usage rules; beware of descriptive or generic terms.
For rights holders online: leverage Content ID, Rights Manager, and DMCA-style processes; monitor platforms, and push for timely takedowns and revenue mechanisms where appropriate.
For policymakers: balance between innovation, consumer access, and fair remuneration; enforce transparent licensing and proper liability rules for platforms.
Quick reference to numerical/legal markers
Copyright duration: ext{Term}_{ ext{copyright}} = ext{Life of author} + 70 ext{ years}
Patent term: ext{Term}_{ ext{patent}} = 20 ext{ years from filing}
Trademark duration: renewals occur in 10-year increments; renewal required.
TRIPS minimum standards and enforcement provisions.
DSM Directive - Article 17: platform liability rules; stay-down concept and licensing requirements.
Small platform exemptions: annual turnover < €10 million; operation < 3 years; stay-down exemptions apply in certain scenarios.
4. Patent, Know-how
Patent vs Utility Model
Patent: protection for inventions; typically longer-term protection and substantial examination.
Utility model: protection for incremental innovations with less stringent novelty requirements; faster and cheaper protection for improvements to existing products/tools.
Key patent concepts
Invention: novelty, inventive step, and industrial applicability.
Extrinsic novelty: not previously known to the public.
Intrinsic novelty (inventive step): a creative contribution not obvious to a skilled person in the field.
Industrial applicability: can be built and used in industry.
Lawfulness: not contrary to public policy or morality.
Alternatives: an applicant may file a utility model application alongside a patent application (Art. 84 IPC) for potential enforcement if the patent is not granted or is granted in part.
Patent maintenance and enforcement
Maintenance fees: due from the fifth year onward; can be paid in lump sums.
Patent forfeiture: lapse ipso jure for failure to pay maintenance fees within six months of due date.
Non-enforcement consequences: if no implementation within three years from issue, a compulsory non-exclusive license may be granted; if no implementation within two years of a compulsory license, the patent may lapse.
Know-how and trade secrets
Know-how: knowledge or experience useful for production or distribution; not necessarily patentable.
Protection of secret information: business or technical information with economic value, kept secret through reasonable measures; protected under appropriate laws.
5. Enforcement, remedies, and enforcement tools
Judicial protection (general)
Forum rei (court where defendant is located) or forum delicti (place of infringement).
Emergency measures (information requests, injunctions, seizures) can be sought.
Damages: compensatory damages, lost profits, and profits earned by the infringer may be recovered.
Specific enforcement tools
Request for information (Art. 121-bis IPC): identify origin and distribution networks.
Seizure (Art. 129 IPC): seize infringing goods and production means; needed when fumus boni iuris and periculum in mora are shown.
Inhibition (Art. 131 IPC): injunction to stop infringing activity; penalties for continued infringement.
Description (Art. 128 IPC): obtain a description of infringing objects and methods for evidence gathering.
Damages and compensation schemes
Directive 2004/48/EC-inspired approaches: compensatory damages, lost profits, restitution of the infringer’s profits, and possible consolidated sums; remedies should reflect actual economic harm and market impact.
Customs and criminal enforcement
Customs protection under applicable EU and national rules; border controls to block counterfeit goods.
Criminal sanctions for counterfeiting and related activities under national criminal codes.
6. Practical guidelines and case highlights
Before filing a trademark application
Conduct availability searches; consider domain names and potential conflicts; assess likelihood of confusion with existing marks.
Notable cases and takeaways
Distinctiveness is key for registrability; descriptive or generic terms face high barriers.
The strength of a mark affects the scope of protection (weak vs strong marks).
Three-dimensional shapes are registrable marks when they serve as a distinctive indicator of origin and are not purely functional.
Collective marks and certifications
Collectives require governance rules and control procedures; quality certifications require standard-setting bodies and third-party conformity assessment.
Online enforcement and platform liability (DSM Directive emphasis)
Platforms must seek authorization to host protected content; active role implies tighter liability or loss of safe harbours.
Licensing and transparency mechanisms are designed to create a fair remuneration framework for creators.
Miscellaneous notes
Public domain and post-term considerations for works (e.g., Betty Boop imagery example in a 2016 Bari court decision) illustrate the boundaries of copyright vs trademark rights.
Useful numerical snapshots (from the slides)
Copyright term: ext{Life of author} + 70 ext{ years}
Patent term: 20 years from filing
Trademark duration: 10-year increments (renewable)
YouTube UGC scale ( illustrative figures )
300 hours of video uploaded every minute
~250 million pieces of audio/video content uploaded every day
~500 million uploaded contents per day (text, photo, video)
Key actors and institutions mentioned
MiBAC – Directorate General for Libraries and Cultural Institutes (copyright authority in Italy)
UIBM – Italian Patent and Trademark Office (national level)
EUIPO – European Union Intellectual Property Office (EU-level trading marks)
WIPO – World Intellectual Property Organization (international framework)
Courts cited: ECJ (European Court of Justice), Italian Courts (e.g., Tribunale di Napoli, Roma, Torino, Bari)
Summary of the ecosystem
IP law interlinks national, regional, and international frameworks.
Protection hinges on distinctiveness, proper representation, and lawful usage.
Enforcement relies on a mix of civil, administrative, and criminal tools; modern regimes assign responsibilities to platforms to balance access with rights holder protection.
Quick reference: key formulas and dates
Copyright term: ext{Term}_{ ext{copyright}} = ext{Life of author} + 70 ext{ years}
Patent term: ext{Term}_{ ext{patent}} = 20 ext{ years from filing}
DSM Directive: EU directive approved 2019; transposition deadline for member states two years from entry into force.
Nice Classification: 45 classes (1–34 goods; 35–45 services).
Selected dates for conventions and treaties
Paris Convention: 1967 (updated later years in notes)
Berne Convention: 1971 (updated later years in notes)
TRIPS: 1994
PCT: 2004
WCT: (digital agenda) – ongoing updates through 2000s
Notable legal thresholds
Distinctiveness and novelty requirements for marks (Art. 7, Art. 12, Art. 13 IPC).
3-year/€10 million exemptions in DSM Article 17 enforcement for platforms.
Stay-down obligation for certain platforms under Article 17 conditions.
If you would like, I can tailor these notes to a specific exam format (e.g., outline, flashcards, or a condensed cheat-sheet) or expand any section with additional examples or case law explanations.