“Vespa”
摘要
For the purposes of absolute grounds for refusal to register a shape mark in cases where the mark consists exclusively of the shape of a product or another of its characteristics, the concept of shape (or other characteristic) which gives the product “a substantial value” refers to the shape that confers market value. This is an additional appeal factor that in any case could “to a large extent” but not necessarily and not only predominantly, influence consumers’ purchasing decisions. The fact that the characteristic in question is very important does not mean that it must be the only or main reason compared with other reasons that might influence a consumer to choose that product, since the refusal of registration refers to shapes or characteristics that increase the product’s appeal by lending it a particular market value. This plays a part in influencing and determining the public’s purchasing decisions, alongside, where applicable, other of the product’s characteristics. Acknowledging the artistic value of a product’s shape as a work of design for the purposes of protection under the Copyright Law means, as a rule, that that same shape gives the product that “substantial value” which precludes its registration as a trade mark. The cumulation of copyright protection and protection as a design, which are based on different assumptions, is a different matter. Thus, it cannot be ruled out that, on expiry of copyright protection, as a result of secondary meaning a shape registered as a utility model may also acquire distinctiveness for the purposes of protection as a shape mark. For plagiarism to exist, the essence of the works must be identical, given that plagiarism is excluded in cases where the works merely share a common starting point or inspiration drawn from the heritage of thought and ideas that belongs to us all and where the expressive result is not equal. Plagiarism does not exist when the second creation merely draws inspiration and ideas from the first one and translates them into a subjectively different and substantially new reproduction of the same idea of the work in question, without, however, giving rise to a “substantial reworking without consent or an unauthorised imitative reworking of the work”. Plagiarism by reworking consists of the unlawful and unauthorised reworking of the original work, even in a form that exhibits novelty and creativity, in breach of Arts. 4 and 18 of Law No. 633/1941. Thus, the exploitation of a derivative work, where it amounts to a creative but unlawful reworking of the original work without the prior authorisation of its creator, also brings copyright protection into play.