Client: Natuzzi
Case: Updating the industrial property department
Year: 2008

NATUZZI SPA, headquartered in Bari (Italy), is the world’s leading upholstered leather furniture manufacturer. It is currently quoted on the New York Stock Exchange and exports to more than 135 countries.

INITIAL SITUATION
The Company had a legal department responsible for legal matters in relation to protection of the company’s intellectual property (IP). However, the company lacked a monitoring protocol and an efficient file for immediate management of the portfolio of rights around the world.
SO

OUR PROPOSAL

LUTION PROPOSED
By creating an IP department in outsourcing, combining the work of a specialist in international portfolio management with that of the internal legal department, developing protocols and tools to align the management of rights with the company’s business strategy and efficiently coordinating the network of correspondents all over the world we guarantee global protection for the group’s trademarks and R&D+i.

PROJECT DEVELOPMENT
IBIDEM carried out due diligence of the firm’s intellectual property assets using a system known as the AcidTest©, which makes it possible to put together a better management strategy. It also developed protocols for a number of group procedures and digitalized thousands of documents for online access, to standardize guidelines around the world.

FINAL RESULT
NATUZZI entrusted the global management of its legal intellectual protection policies to IBIDEM, which comprised more than 3,000 files around the world, maintenance and surveillance systems, as well as establishing tools, giving directors online access to relevant information. We used these new tools to align intellectual property portfolios and business strategy from a cost-effectiveness standpoint, which is more efficient in terms of defense and is easier to manage and maintain.

WHO IS THE OWNER OF A COMMUNITY DESIGN APPLIED FOR ON COMMISSION?

WHO OWNS THE DESIGN RIGHTS OR COMMUNITY MODEL COMMISSIONED?

In a decision issued on 5 July 2009, in matter C-32/08, “FEIA / Cul de Sac, Acierta”, the European Court of Justice ruled on the interpretation of articles 14 (1) and (3) of Council Regulation No.6/2002 of 12 December 2001, on Community Designs (RDC). This prejudicial question is even more important because this was the first time that the European Court of Justice had interpreted Regulation 6/2002 in the development of community design case law, which is still very much in the early stages. It also explained the questions being raised because of different opinions of experts in intellectual property.

In the sentence, the FEIA conceived a product called D’Artes, in which 50 craft workshops were able to create a range of products for sale through a design project carried out by a professional. The company Acierta, Product&Position, S.A. as curator of the project, established the parameters for material performance of the project and was responsible for choosing and coming to agreements with the designers.

In this context, Acierta entered into a verbal agreement with Cul de Sac, Espacio Creativo, S.L, which was not covered by Spanish labor law, by way of which the latter agreed to create a design and provide technical assistance to a craftsman who would make a new collection of products. Cul de Sac designed a series of wall clocks, which were made by the craftsman and presented as the “Santamaría” collection in April 2005.

Cul de Sac and Acierta then went on to manufacture and market the “TIMELESS” collection of cuckoo clocks.

FEIA considered that these cuckoo clocks were copies of the unregistered community designs in the “Santamaría” collection, claiming ownership as sponsor and main funder of the project and by virtue of assignment of the exclusive rights by Acierta with regard to exploitation of the products made. It was on these grounds that the Foundation brought an action against Cul de Sac and Acierta, alleging infringement of its rights over these community designs.

Community Trade Mark Court No. 1 of Alicante considered that FEIA could only invoke title to the designs in dispute if Acierta itself, which assigned them, had been the owner of said designs. It suspended the procedure pending answers to a series of prejudicial questions it put to the Court of Justice, based on which it would decide how to rule on the dispute between the parties, which would depend on the interpretation of Article 14 of Regulation No. 6/2002 on community designs.

In its resolution, the Court found, in the first place, that Article 14.3 establishes a special legal regime for a specific type of contractual relationship, the labor relationship, therefore excluding the application of other types of contractual relationships, such as a commission to create a design. This must also be understood in the light of the preparatory works on the Community Institutions Regulation.

The court then looked at the interpretation of Article 14.1 of the Regulation, stating that “The right to a community design belongs to its author or its successor-in-interest”, and, more specifically, in the sense that must be attributed to the expressions “author” and successor-in-interest”,  so that it is interpreted in the same way in all Member States of the European Union, concluding that, both the implicit meaning of Article 14.1 itself and the preparatory work on the Regulation and some of its linguistic models, it states that the author may transmit the right to the design to its successor-in-interest by way of an agreement. To summarize, the right to the community design belongs to its author, except when this has been transmitted to its successor-in-interest by way of an agreement.

This is a significant decision, because the Court is stating that the community right should be interpreted autonomously, maintaining the essence of the community designs system.