On January 30, opening date of the Milano-Cortina 2026 Winter Olympic Village, the so-called “Games Period” began. Throughout such term (which will end on February 24, two days after the Closing Ceremony), the Key Principles of the International Olympic Committee (IOC) are applicable to govern the use of participants’ images in advertising[1].

Just on that date, the Italian Competition Authority (AGCM) issued a press release whereby, upon a complaint filed by the Special Antitrust Unit of the Italian Financial Police (Guardia di Finanza), it had launched an investigation against a company for ambush marketing in relation to the Milano-Cortina 2026 Olympic and Paralympic Winter Games[2]. That company – who is not among the official sponsors – seems to have published online advertisements, including on major social networks, frequently showing – also in combination with its own distinctive signs – the Olympic symbol (the five coloured rings) and/or the hashtags #MilanoCortina and #MilanoCortina2026. As part of this conduct, the company also engaged influencers and advertised a line of clothing named Cortina a colori (namely Cortina in colour).

The AGCM investigation, opened in conjunction with interim measure proceedings for the provisional removal of the advertisements at stake, is grounded on the apparently unlawful direct association between the company’s brand and the Games, in breach of Article 10 of Decree-Law no. 16/2020 (Decree-Law)[3].

Let us take a step backwards to recall the ad hoc national legislation on ambush marketing, which was issued in consideration of the urgent need to strengthen the regulatory framework to counter free riding and protect well-known marks in the field of sports, as well as the specific commitments made to the IOC for Milano Cortina 2026.

Article 10 expressly prohibits free-riding activities, described as “parasitic, fraudulent, deceptive or misleading advertising and marketing activities, carried out in relation to the organization of sporting events or trade fairs of national or international importance, that are not authorized by the organizers and are intended to obtain an economic or competitive advantage” (para.1). This definition illustrates the concept of ambush marketing. A specific list of banned free-riding activities is then supplied (para.2):

1. the creation of an even indirect link between a trademark or other distinctive sign and the event, likely to mislead the public as to the identity of the official sponsors;
2. the false representation or declaration in one’s advertising of being an official sponsor of the event;
3. the promotion of one’s trademark or other distinctive sign through any action, not authorized by the organizer, that is likely to attract the attention of the public, carried out during the event and likely to give the public the false impression that the person performing the action is a sponsor;
4. the sale and advertising of products or services unlawfully branded, even only in part, with the logo of the event or with other distinctive signs likely to mislead the public about the logo itself and create the erroneous perception of a connection with the event, its organizer or sponsors.

Arguably, the conduct that is being investigated by AGCM would fall under letter/s a) and/or d) in particular.

Moreover, the conduct would be covered by the timeframe of application of the prohibitions under Article 10, which runs from the date of registration of the official logos or trademarks of the event until the 180^th day following the official end date of the latter (Art.11). Hence, the investigated company risks an administrative fine ranging between Euro 100,000 and Euro 2.5 million (Art.12).

The application of the Decree-Law to this case would not be a première. By decision no. 30099 of 29 March 2022[4], the AGCM found that a well-known company active in the field of e-commerce had put in place a free-riding advertising activity surrounding the international soccer event UEFA Euro 2020. More particularly, the Financial Police had reported the presence, in a square in Rome where UEFA had set up the official Football Village, of a large-scale billboard featuring the claim “Who will be the winner?”, the name of the company, images of the 24 flags of the countries participating in the tournament and a white football t-shirt bearing the company’s logo.

The fine was inflicted in the minimum amount set out by the Decree-Law, in consideration, among others, of the limited geographical diffusion of the message (one billboard affixed in a single square) and the circumstance that it was the first enforcement of the new provisions after their entry into force. Neither of these circumstances could be relied on in the pending case; in particular, one may observe that running ads on the Internet entails an indefinite, potentially very large, territorial reach.

It is moreover noted that, as likewise specified in the Decree-Law (Art.13), the new rules do not preclude the enforcement of other legal provisions applying to the same free-riding conducts. As IP practitioners know, ambush marketing can be addressed within the framework of several pre-existing sets of provisions, especially the following.

• Trademark law, with respect to the distinctive signs of the event (under the Industrial Property Code for national trademarks; under Regulation (EU) 2017/1001 for EU trademarks). This remedy may prove of limited effectiveness, considering the weak distinctive character of the trademarks concerned (inasmuch as they identify/describe the hosting town or the type of sporting event concerned), and furthermore considering that the ambusher does not necessarily reproduce or imitate the organizer’s logo/name.
• Unfair competition, under art. 2598 of the Italian Civil Code, chiefly for misappropriation of merits and/or non-compliance with principles of professional fairness, provided that the ambusher qualifies as a “competitor”.
• Fairness in advertising, in particular under the Code of the Advertising Self-Regulation Institute (IAP Code), which is binding on those having accepted it directly or indirectly; and/or under Legislative Decree no. 145 of 2 August 2007 (on misleading advertising), as for relations between entrepreneurs/professionals; and/or under the provisions of the Italian Consumer Code on unfair commercial practices to the detriment of consumers.

In real-life cases – unless in presence of “hardcore” ambush marketing, characterized by a direct association with the event through an explicit use of its official signs – drawing a clear line between legitimate and unlawful marketing initiatives may not be obvious. The borderline becomes blurred when it comes to marketing strategies where the connection established between the non-sponsor brand and the event is more indirect. This happens, for instance, in the case of so-called coat-tail ambushing, which leverages the sponsorship of a prominent participant in the event (individual athlete or whole team, coach, trainer or official), in order for the brand to gain visibility bypassing the payment of the event sponsorship fees.

According to the Decree-Law, conduct carried out performing sponsorship agreements with individual athletes, teams, artists or participants authorized to the event does not constitute free-riding advertising (Art.10, para.3).  However, the engagement of participants in commercial activities around the event, especially the use of their personal image in advertising by non-sponsors/non-partners of the event, remains a delicate issue.

As for the upcoming 2026 Winter Olympics, the abovementioned IOC Key Principles provide that “All Participants are permitted to promote their sponsors, and all sponsors are permitted to use Participant Images (in each case including Olympic Partners and Non-Olympic Partners), during the Games Period …”, but “… in accordance with the following Principles”[5], the implementation of which is a shared competence between the National Olympic Committee (for Italy, the CONI) and the Organizing Committee (for the upcoming Winter Olympics, Fondazione Milano Cortina).

Looking at the Principles, one reads that during the Game Period Non-Olympic Partners are allowed to use participants’ images for advertising subject to specific conditions. In addition to (i) obtaining the necessary consents from the participants concerned and (ii) respecting certain policies on activities that are incompatible with the Olympic values (for example, sponsorships connected with tobacco or prohibited drugs are banned), the advertising needs to (iii) avoid the use of any “Olympic Properties” and (iv) constitute “Generic Advertising”[6].

The list of Olympic Properties is extensive and detailed, including in particular: the Olympic symbol; the Olympic-related registered trademarks; the emblem, mascots, pictograms and graphics of the Games; the name of the host city along with the year of the Games (i.e. Milano Cortina 2026); the very words Olympic, Olympics, Olympic Games, etc.; names and emblems of Olympic teams (such as Italia team); the Olympic motto; films, musical/artistic works and designs created by the organizers; as well as “any other symbols, designs, works, words or expressions that are translations of, or which could be confused with, those listed above”.

In order for a marketing campaign to qualify as Generic Advertising, three cumulative requirements need to be met: that (i) the only connection between the Olympic Movement and the relevant marketing activity is the use of the image of a participant in advertising; (ii) the advertising has been on the market for at least 90 days prior to the Games Period, and (iii) the advertising has been run consistently and not materially escalated during the Games Period. Criteria (ii) and (iii) apply with a degree of flexibility, with exemptions to be considered by IOC on a case-by-case basis. In any event, within a specific deadline, Non-Olympic Partners are expected to have notified the IOC (or the relevant National Olympic Committee, in case of single-territory campaigns) of their Generic Advertising, so that the organizers are made aware of the planned activity, can verify its compliance and supply their feedback (for social media advertising, it is sufficient to describe the planned nature and content thereof, without the need to provide notice of each individual post).

Interestingly, still based on the IOC Key Principles, congratulatory advertising (either supporting an athlete/team or praising them for achievements at the Games), is not regarded as amounting to Generic Advertising, because of its “intrinsic connection with Milano Cortina 2026”. Non-Olympic Partners may undertake congratulatory advertising before and after the Games Period, but without using any Olympic Properties; brands of sporting goods participating in a specific project involving the World Federation of the Sporting Goods Industry (WFSGI Project) may do it (in the manner set out within the WFSGI Project itself) at any time, including during the Games Period.

On the whole, this set of limited restrictions is aimed at maintaining the distinctiveness of the official Olympic marketing programmes and supporting the funding of global athlete participation (the IOC runs an international marketing programme based on the principle of solidarity, to ensure that all teams are adequately funded to be able to join the Olympics)[7].

To facilitate the implementation of the Key Principles, the IOC issued an Illustrative Guidance dedicated to Non-Olympic Partners[8], containing a series of practical examples distinguishing between allowed and non-allowed initiatives, with images and brief explanations. The Guidance is relevant for advertising activities that cover more than one country, while those targeting only one territory are subject to the rules of that country’s National Olympic Committee and/or the relevant Organizing Committee.

The CONI has actually published its own Guidelines[9]. Besides, Fondazione Milano Cortina 2026 has issued, among other information on the protection of Intellectual Property in relation to the Games[10], specific Guidelines addressed to shopkeepers[11]. Basically, business owners can create a welcoming atmosphere (for example, using country flags, generic references to sports and neutral messages such as “Let’s celebrate sport!”), but without suggesting an official association with the Games. Rather, the Guidelines require a non-sponsor business to refrain from creating installations, shop windows, corners or other structures reproducing the trademarks of Milano Cortina 2026 or showing an excessive similarity to the graphics of the Games, in a way that suggests an official affiliation or association. For retailers whose stores are located within 500 meters of the competition venues and whose media exposure could be significant, the principle of continuity (so-called business-as-usual rule) applies.

To sum up, the upcoming 2026 Winter Games ought to also supply a sort of fresh legal playground. Within the multi-layer legal framework outlined above it could be instructive to see, on the one hand, whether organizers and sponsors will resort to the remedies available to them, and to which ones, to root out unlawful ambush marketing; and, on the other hand, whether marketing offices and agencies of non-sponsor businesses will succeed in being creative and ride the wave of enthusiasm surrounding the Olympics without slipping into infringement and/or free-riding practices, first and foremost in the digital landscape.  

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On 10 December, our Senior Associate Giulia Beneduci joined, as a guest-speaker, the international online forum WE MEET ON AIR sharing our project – Real estate qualification and enhancement from public spaces to residential living, organized by Simone Micheli Architectural Hero.

This cross-cutting event gathered high-profile participants from diverse backgrounds, businesses and institutions, architects, builders, real estate entrepreneurs, hoteliers, etc., who could exchange experiences, ideas and projects: an innovative format to learn, weave relationships and explore professional synergies.

In this lively agora, Giulia gave some legal insights into IP rights that may arise on architectural projects/works and objects of industrial design/applied art, with a view to helping their identification, protection and enhancement.

Many thanks to the organizing team for the invitation and efficient set-up, as well as to all speakers for the quality of their inputs.

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On 15 September 2025, the Fashion Sustainability and Law Forum took place, organized by the Sustainability, Education and Business Club in partnership with the Department of Law of the Università degli Studi di Bergamo.

Our senior associate Giulia Beneduci participated as a speaker in an interactive session with Matteo de Padova, co-founder of Winetage Design, entitled: “From Waste to Wow: a Dialogue on Arele, an Upcycling Project Embracing Design, Fashion, and Wine Made in Italy”.

Their speech started from the story of Arele: a luxury chaise longue crafted by Winetage’s designers and exhibited at Milan Design Week 2025, made from reclaimed wine barrels in collaboration with Tommasi Family Estates and upholstered with natural fabrics by Luca Faloni.
Among others, it was described how the underlying creative process reinterprets certain features – like colour, curvature and scent – imprinted to staves by wine during the ageing process, in harmony with the appearance of the cloth, in turn evoking the nuances of wine.
Besides tracing how this upcycling project concretely took shape, certain legal challenges were explored, especially contractual issues and IP protection. Last but not least, it was discussed whether and how this project could pave the way for larger-scale cross-cutting regenerative practices.
One of the key takeaways from Arele’s experiment and vision is that progress towards a more sustainable future, also leveraging Italian excellence, is likely to be driven by collaboration and “contamination” between diverse sectors, rather than by working in silos.

We thank all participants and the organizing committee for making the event a valuable opportunity for networking, discussion, and growth.

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Last Friday, 16 May, within the AIJA Half-Year Conference in Milan, our senior associate Giulia Beneduci moderated the session “Fashion in Trouble: ADR or Litigation to the Rescue?“, organized by the Litigation, International Arbitration, Insolvency and IP/TMT Commissions. The topic was discussed with the other panelists: Dimosthenis Stefanopulos, Anna Zabrotskaya and – as keynote speaker from the fashion industry – Sara Citterio (TRUSSARDI).

Starting from a cross-cutting legal overview, following up with a series of real-life cases and finally collecting direct insights from the fashion industry, it was shown that the issues revolving around “fashion in trouble” are manifold, and chiefly revolve around (among others) how to preserve brand value and reputation. The answer to the question whether litigation and/or arbitation should be prioritized as a legal tool to the rescue, also based on polls launched to the audience, appeared anything but black-or-white.

Networking, updating and discussion: a perfect mix that made the conference a unique opportunity, bringing together hundreds of lawyers from various jurisdictions.

Thanks to all participants and the organisers for this inspiring event.

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On April 3rd, Giulia Beneduci and Silvia Bolognani participated as speakers in the online event “The protection of design: boundaries, normative evolutions and implications for the sector“, organized by INDICAM.

The training seminar, aimed at professionals and companies, sought to illustrate the new regulatory scenarios and their implications in the design sector. The debate focused on recent regulatory and case-law developments that present new challenges and opportunities for the sector.

Giulia and Silvia contributed by delving into the topic of the new repair clause, exploring its origins and impact.

Download the event flyer here.

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On March 27, 2025, the 3rd Edition of the International Conference on Influencer Marketing, organized by INDICAM, took place.

An event that offered an important opportunity for dialogue, shedding light on the challenges and opportunities of a constantly evolving sector.

This edition was entirely dedicated to influencer marketing and featured the launch of the new INDICAM Editorial Series. Among the authors were Andrea Terragni, Giulia Beneduci and Silvia Bolognani, who contributed to the chapter titled “Interaction Between Authorities”.

Among the speakers was also our Andrea Terragni, who, during the second round table, explored the topic of interaction between authorities, analyzing the roles played in Italy by AGCM, IAP, and AGCOM. His focus was on the risk of conflicting rulings related to the so-called “dual track” between administrative and judicial protection.

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Background, objectives and effectiveness of the reform package^[1]

The pre-existing framework of design law within the European Union is more than twenty years old. It provides a two-layer system of protection, pursuant to:

• Directive 98/71/EC of 13 October 1998 on the legal protection of designs (Design Directive), which harmonized the key-provisions of national design laws, and
• Council Regulation (EC) no. 6/2002 of 12 December 2001 (Community Design Regulation, CDR), governing a unitary design title within the EU.

Despite a few attempts, no overall review of this system was put in hand until 2014, when the EU Commission took steps in that direction. Some studies were conducted, from both a legal and an economic perspective, along with stakeholders’ consultations, based on which, in November 2020, a Commission Evaluation was published^[2]. What came out was that, on the whole, the system was fit for its purposes and worked quite well, helping to foster innovation in the design field^[3]. However, certain shortcomings were identified.

In particular, since the entry into force of the Design Directive and the CDR, technology had registered a breakthrough, especially in the digital field: new objects and scenarios needed to be covered, and clearly legislated on. Certain procedures in relation to design filing, prosecution and claims had become outdated and needed to be streamlined; fee levels and structure resulted sub-optimal, sometimes discouraging individual designers and SMEs from seeking registration or renewal. Furthermore, as to design protection for spare sparts, a patchwork of diverging national regimes emerged, resulting in barriers to competition in the relevant aftermarket.

So, the legislative process was launched, to revise both the CDR and the Design Directive, with the publication by the Commission of two Proposals in November 2022^[4]. In 2023, after in September the Council had adopted its positions (“general approaches”), introducing some amendments to the Proposals, in December the co-legislators – Council and European Parliament – reached a provisional deal on the design package. In 2024, after in March the Parliament had formally endorsed the two drafts (with some amendments), on October 10 the new texts were finally adopted, through approval by the Council.

The EU design package (Design Reform) consists of two instruments:

• Directive (EU) 2024/2823 of 23 October 2024 on the legal protection of designs (recast) (New Directive)^[5], and
• Regulation (EU) 2024/2822 of 23 October 2024 amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002^[6] (Modifying Regulation)^[7].

The Design Reform entered into force on 8 December 2024, on the 20^th day following its publication in the Official Journal of the European Union (occurred on 18 November). The Modifying Regulation will apply in general from 1 May 2025^[8], while some specific amendments, including those brought about by secondary legislation, will apply as from 1 July 2026^[9].^[10] The New Directive will apply after 36 months since its entry into force, namely in December 2027^[11].

The objectives of the Design Reform are manifold: (i) modernizing, clarifying and strengthening design protection; (ii) making it more accessible and affordable across the EU; (iii) ensuring enhanced compatibility and interoperability of national systems for design protection in Member States; (iv) harmonizing national regimes on design protection for repair spare parts, tackling the fragmentation of the relevant market within the EU.

As one reads in the Explanatory Memoranda to the Proposals: “… Considered together as a package … the main common objective of this initiative … is to promote design excellence, innovation and competitiveness in the EU. This is to be done by ensuring that the overall design protection system is fit for purpose in the digital age and becomes substantially more accessible and efficient for individual designers, SMEs and design intensive industries in terms of lower costs and complexity, increased speed, greater predictability and legal certainty …”^[12].

Here follows a selection of the main changes that have been introduced to achieve these goals.

New definitions of “design” and “product”

The core definitions of “design” and “product” are broadened, clarified and updated with respect to technological advances in the digital field.

The definition of design now expressly encompasses “the movement, transition or any other sort of animation” of traditional features (namely, of “the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or of its decoration”)^[13].

According to a summary of the Design Reform issued by the European Union Intellectual Property Office (EUIPO), “animation” is to be understood as a progressive change of the design feature(s) concerned, with or without retaining their identity; it includes both movement and transition^[14].

Hence, dynamic designs, either physical or digital (like the movement of a furniture component or the animation of a computer icon), now clearly fall within the scope of design protection.

Also the definition of “product” was reshaped, to expressly include non-physical items: now product means any industrial or handicraft item, other than a computer program, “regardless of whether it is embodied in a physical object or materializes in a non-physical form”^[15]. Thus, the door is open to completely digital products, such as virtual objects authenticated by NFTs or existing only in the metaverse, or CAD files used to print 3D models.

Besides, the exemplifying list of what can qualify as a product was revised and clarified, now explicitly covering also “sets of articles”, “spatial arrangements of items intended to form an interior or exterior environment” (e.g. the digital rendering of an interior design project), “graphic works”, “logos”^[16], “surface patterns” and “graphical user interfaces” (GUIs).

Clarifications on the visibility requirement

It was clarified that protection is conferred (only) for those features of appearance of a registered design that are shown visibly in the application as filed^[17], and in that way are accessible to the public through consultation of the relevant register/s.

Conversely, it is immaterial whether the design features are visible or not at any particular time or in any particular situation in the course of product use. An exception to this principle applies to component parts of a complex product, which (already under the former legislation) are eligible for design protection on condition that, once they are incorporated into the complex product, remain visible during the normal use of the latter (and to the extent that such visible features of the component part fulfil in themselves the requirements of novelty and individual character)^[18].

As noted by the Max Planck Institute in its Position Statement on the Design Reform^[19], the EU legislator rectified the product-oriented approach taken by some case law, in particular by the General Court (GC) in its Biscuit Poult case^[20]. In that judgment of 2014, concerning a registered Community design intended to be applied to cookies, the GC dismissed the appeal brought by the design holder against the OHIM Third Board of Appeal’s decision of 2012 whereby the Office had found the contested design invalid (on the ground that it lacked individual character).

The Board of Appeal had held that the layer of chocolate filling inside the biscuit could not be taken into consideration for the assessment of the individual character of the design, because it did not remain visible during the normal use of the product. The GC held that the internal layer of chocolate filling became visible only if the cookie was broken, hence, that characteristic did not relate to the appearance of the product. However, the concept of “external visibility” is capable of generating legal uncertainty, inasmuch as it does not stick to what is identifiable from the design registration: in this perspective, the clarification provided by the Design Reform should contribute to greater legal certainty.

Besides, as also highlighted in the Max Planck Institute’s Position Statement, this revision meets the expanded definition of “product”, in the sense that where digital products are at stake, there is an immanent conflation between design (as appearance) and product itself (as the separable item to which appearance relates). The new regime “now adds graphic works, logos, and graphical user interfaces to the list. In all these instances, the product is indiscernible from its appearance. There is nothing beyond appearance. … Such products only exist by means of their visual appearance. They do not possess any other dimension. We can encounter them only as purely visual signals. Here, preconceived notions of real-life objects cannot function as a reference point to define the object of protection.”^[21]

Representation requirements simplified

New digital designs require appropriate means to provide a clear and precise visualization in design applications, catching up with technological advances and following common standards across Member States^[22]. With that in mind, the Design Reform made representation requirements more flexible.

The New Directive provides that a design can be represented “in any form of visual reproduction”, which may be “static, dynamic or animated” and may be effected “by any appropriate means, using generally available technology”, including (in addition to drawings and photographs) also “videos, computer imaging or computer modelling”^[23].^[24]

Consistently with that premise, the New Regulation^[25] foresees that, as to permissible means of representation, the EUIPO Executive Director is supposed to determine the formats and size of electronic files, as well as other relevant technical specifications^[26].

While designs of animated objects (such as moving icons, cartoon characters and graphical user interfaces) can already be registered under the pre-existing framework, the new means for representing them should help to overcome the limits inherent in those previously envisaged. Suffice it to note that, as to snapshots (short sequences of static views in progression, used to show an animated design at different specific moments in time), the 2024 EUIPO Design Guidelines^[27] specify that “In principle … all views of an animated icon or graphical user interface need to be visually related”, and that “It is the applicant’s responsibility to order the views in such a way as to give a clear perception of the movement / progression”^[28]. Applicants will now be able to bypass that hurdle when filing a dynamic design.

Still with reference to design representation, both legislative texts address the relevant requirement for design applications, providing that a “sufficiently clear” representation of the design, such as to permit the subject matter for which protection is sought to be determined, will be enough to obtain a filing date^[29].

As a further element of flexibility, the cap set at maximum seven different views of a design that can be contained in an application^[30] is removed. Rather, pursuant to the New Directive, the reproduction of a design shows all aspects for which protection is sought “in one or more views”, and “other types of views” can be provided for the purpose of further detailing specific features of the design^[31].^[32]

Enhanced rights for design holders against digital infringement

One of the findings of the Commission’s assessment was that design protection against infringement rested on an unclear scope, apparently inadequate with respect to certain forms of use or reproduction performed by means of new digital tools, like 3D printing. Fundamentally, through 3D printing a design is encoded in a software and then processed by a computer, in such a way that, starting from a digital file, layers of material are mechanically deposited one on top of the other to obtain a physical 3D reproduction of the design itself.

Under the CDR and the Design Directive, there is no doubt that once the knock-off printout is made, offered and/or put on the market, an infringement occurs^[33]. However, what if a third party, for example, simply creates and shares a CAD file recording a protected design, when no copy of any product has been printed (yet)? Or what about the mere supply of a software code that can be used to 3D-print an object incorporating the design?

The Design Reform addresses this issue, expanding the list of specific forms of use expressly covered by the exclusive rights conferred to the design holder, including also the rights of “creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product … to be made”^[34].

This amendment should enhance design holders’ enforcement rights against infringers, making them more effective in the digital era. However, some stakeholders called for additional clarification. In particular, the Max Planck Institute in its Position Statement remarked that the new legislation expressly refers the further uses mentioned thereby only to the specific purpose of making a product, while a common case of indirect infringement can notably consist of the online sharing of files for display in screens of computers or smart devices. “It might be questioned, therefore, whether indirect infringements by way of sharing any medium or software recording the design also fall within this provision (e.g. by way of an analogy) or if there is a legislative intent to leave it out.”^[35].

The new repair clause

The issue of design protection for spare parts has long been controversial, as a result of the underlying effort to strike a balance between the need to reward efforts deployed in aesthetic research and that to prevent the monopolization of the secondary market for components necessary to repair a complex product.

The framework outlined by the Design Directive and the CDR reached a transitional compromise, oriented towards increasing liberalization. The driver was that, until appropriate amendments to the Design Directive are adopted, Member States can introduce changes to their existing laws on the use of the design of a spare part (namely, of “a component part used for the purpose of the repair of a complex product so as to restore its original appearance”) only if the purpose is to liberalize the market for such parts (so-called freeze-plus clause)^[36]. Some Member States introduced a repair clause^[37], while others did not. As to Community designs, the CDR provides that, until relevant amendments are enacted and enter into force, protection for the design of repair spare parts cannot be claimed^[38].

The Design Reform tries to shed light on the repair clause and boost it, at the same time harmonizing the relevant regime across Member States. More particularly, also resting on some teachings from EU case law (see, in particular, the Acacia judgment^[39]), the new provisions^[40] expressly state that design protection is not conferred on a component part which is used for the sole purpose of repairing a complex product so as to restore its original appearance (hence, the repair clause applies), provided that:

(i) the design of the component part is dependent upon the appearance of the complex product (so-called must-matchcomponent), and

(ii) the manufacturer or seller^[41] of the spare part has duly informed consumers, through a clear and visible indication on the product or in another appropriate form, about the commercial origin of the product and the identity of the manufacturer, so that they can make an informed choice between competing products that can be used for the repair (duty of diligence).

On the other hand, (iii) it is specified that manufacturers and sellers of spare parts are not required to guarantee that the component parts they make or sell are ultimately used by end users only for repair purposes.

Member States will have a transitional period of eight years to implement the new repair clause in their national systems^[42].

Point (i) above addresses the key-distinction between must-fit and must-match components. The former (must-fit components) are to some extent interchangeable, because their outline and dimensions only partially depend on the need to be inserted or assembled into a complex product: e.g. the wheel rims or rear-views mirrors of a vehicle. The latter (must-match components) need, instead, to exactly reproduce the shape of the original component in order to be inserted or assembled with other components into the complex product: e.g. parts of the car bodywork, like a door or the bonnet.

In this respect, the EU legislator seems to depart somewhat from the Acacia judgment (which concerned car wheel rims), whereby, under the repair clause contained in the CDR, the exclusion from protection as a Community design was not subject to the requirement that the design of the repair spare part was dependent upon the appearance of the complex product. However, in the same judgment, the CJEU found that the repair clause could apply on condition that the replacement part showed an identical visual appearance to that of the component which was originally incorporated into the complex product when placed on the market^[43].

The clarification supplied by the Design Reform ought to prove good news for design holders, inasmuch as the applicability of the new repair clause is limited to shape-dependent spare parts.

Points (ii) and (iii) reflect at large the findings of Acacia, despite certain variations. The CJEU held that, “… while the manufacturer or seller of a component part of a complex product cannot be expected to guarantee, objectively and in all circumstances, that the parts they make or sell for use in accordance with the conditions prescribed … are, ultimately, actually used by end users in compliance with those conditions …”, in order to rely on the repair clause they are under a duty of diligence as regards compliance by downstream users with the conditions laid down in that clause^[44].

“… In particular, they must, first of all, inform the downstream user, through a clear and visible indication on the product, on its packaging, in the catalogues or in the sales documents, on the one hand, that the component part concerned incorporates a design of which they are not the holder and, on the other, that the part is intended exclusively to be used for the purpose of the repair of the complex product so as to restore its original appearance.

Next, they must, through appropriate means, in particular contractual means, ensure that downstream users do not intend to use the component parts at issue in a way that does not comply with the conditions prescribed …

Finally, the manufacturer or seller must refrain from selling such a component part where they know or, in the light of all the relevant circumstances, ought reasonably to know that the part in question will not be used in accordance with the conditions laid down …”^[45].

It is noted that the two latter requirements – to adopt appropriate / contractual means and to refrain from selling in case of non-compliance by end users – are not specifically mentioned in the new repair clause. This may be at the source of some uncertainty in applying the new legislation, which would be left to court interpretation.

As regards the informative requirement towards downstream users, the wording adopted in the New Regulation and New Directive expressly refers to the commercial origin of the product and the identity of the spare part manufacturer. On the other hand, some uncertainties may arise in practice as to where an “appropriate form” of giving the information (other than a clear and visible indication on the product) subsists. As a whole, as the Max Planck Institute noted, “… by stipulating that the limitations cannot be invoked if the manufacturer or seller failed to duly inform the consumers about the origin of the product, the … [new] repair clause effectively rebuts the argument brought forth by opponents of the repair clause that consumers might be exposed to risks that they are not aware of when buying a non-original part. …”^[46].^[47]

Fee adjustments

Structure and levels of fees payable to the EUIPO are rearranged. The new scheme is set out directly in the New Regulation (while Regulation (EC) no. 2246/2002 is repealed^[48]).

Looking at the new fee amounts provided by the Annex to the New Regulation, one sees that registration and publication fees are unified into a single application fee (of 350 EUR). In case of multiple application, a flat fee (equal to 125 EUR) per additional design is introduced, eliminating bulk discounts based on the number of designs applied for. On the other hand, renewal fees are increased(e.g. that for the 4^th renewal rises from 180 to 700 EUR)^[49].

The underlying aim is to make design registration more accessible, but at the same time to discourage maintenance of unused or less worthy designs and to reflect the greater value of EU design registration compared to the national ones.

Procedural improvements

Besides fee adjustments, the EU legislator took certain measures to update, simplify and speed up procedures, as well as enhance legal certainty and predictability^[50]. This driver is appropriately summarized through the slogan “easier, cheaper and faster”^[51]. As to Member States, it was considered that the procedure for national design registration should be efficient and transparent, and follow rules similar to those applicable to EU designs^[52].

Among the most significant procedural improvements, the following are worth mentioning.

• The possibility to amend the design application and alter the design registration in immaterial details^[53] is introduced. In interpreting the concept of “immaterial details” a potential risk of legal uncertainty cannot, though, be ruled out.
• The “unity of class” requirement for multiple applications is abolished. More particularly, the possibility to combine several designs in a one-shot multiple application for registration is no longer subject to the condition that the products concerned all belong to the same class of the Locarno Classification^[54]. This change relieves applicants from the burden of filing more applications in the event of simultaneous launch of non-homogeneous products / product features.

Member States are now expressly allowed to provide for an administrative procedure before their IP offices for the declaration of invalidity of registered national designs, which should be substantially aligned to that applicable before the EUIPO to registered EU designs, and can be resorted to without prejudice to the parties’ right to turn to courts^[55].

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The post THE EU DESIGN REFORM HAS ENTERED INTO FORCE. AN OVERVIEW OF THE KEY-CHANGES appeared first on Studio Legale De Berti Jacchia Franchini Forlani.

Giulia Beneduci was speaking at the AIJA – International Association of Young Lawyers IP/TMT Seminar // 11th Antitrust Annual Conference in Málaga.

Giulia participated in the session “Registered designs in transformation: When chairs suddenly move into the digital world”, where she discussed the new challenges in design protection in the digital age with other speakers, Faye McConnell, Anna-Carina Salger, Matt Homyk, moderated by Dr. Cristina Hernandez-Marti Perez, LL.M.

A great opportunity to explore how companies can rethink their IP strategies in light of technological innovations.

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The post NEW TECHNOLOGIES: IS IP/TMT AND ANTITRUST LAW FUTURE PROOF? – Malaga (Spain), October 24th – 26th, 2024 appeared first on Studio Legale De Berti Jacchia Franchini Forlani.

Articolo di Giulia Beneduci pubblicato su Ristorazione Italiana Magazine

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The post UNO SGUARDO AL NUOVO REGOLAMENTO UE SULLE INDICAZIONI GEOGRAFICHE appeared first on Studio Legale De Berti Jacchia Franchini Forlani.

Partecipa al nostro prossimo evento/breakfast, in collaborazione con Camera di Commercio Italo-Svedese Assosvezia, in tema di Artificial Intelligence!

🗓️ mercoledì 10 luglio 2024,
🕔 a partire dalle ore 09:00

Sarà possibile seguire l’evento:
📍 in presenza presso De Berti Jacchia, ingresso da Via Agnello 6/1, Milano
💻 via webinar | Zoom

I professionisti dello Studio De Berti Jacchia, Alessandro Foti, Jacopo Piemonte, Adriano Garofalo, Giulia Beneduci, Silvia Bolognani e Federico Aluigi, offriranno un approfondimento pratico su come le imprese possono affrontare e implementare l’atteso Regolamento sull’Intelligenza Artificiale.

Attraverso l’analisi di case study concreti, i partecipanti riceveranno preziosi consigli per allinearsi a questo rivoluzionario strumento legislativo.

Inoltre, avremo il piacere di ospitare ReD OPEN – Spin-off Università degli Studi di Milano Bicocca con Massimo V.A. Manzari, che esporrà i prerequisiti organizzativi necessari per la compliance con il Regolamento.

L'evento è stato accreditato presso l'Ordine degli Avvocati di Milano e dà diritto a n. 1 crediti formativi.

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The post REGOLAMENTO SULL’INTELLIGENZA ARTIFICIALE: CASI PRATICI PER GUIDARE LE IMPRESE NELL’IMPLEMENTAZIONE – July 10th, 2024 appeared first on Studio Legale De Berti Jacchia Franchini Forlani.