If you see the “meant-to-be” trophy of the Austin F1 GP for the first time, a doubt assails you, and you almost expect the little one to take off his helmet and reveal himself as the famous Mickey Mouse. Then you wonder… what about copyright? (Expired or still in effect?) Reports indicate that shortly before the Austin GP, F1 had to give up the “Heroo” trophy, which appears to be Mickey Mouse in a helmet (gold, silver, or black depending on the podium position), designed by Italian designer Matteo Macchiavelli. But no! The blow did not come from the legendary Mickey Mouse, but seemingly from the Japanese Medicom Toy Corporation, owner of the art toy Be@rbrick, which has been marketed in various versions for several years.
There do not seem to be any trademark or design registrations protecting the shape of the bear art toy in the name of Medicom Toy Corporation at the Italian and/or European level. As is known, the protection of shape as design has temporal limits: novelty is a fundamental requirement, and pre-disclosure allowed is 12 months before registration. On the other hand, obtaining protection for a three-dimensional trademark representing the shape of a product is not straightforward. Copyright rights on the shape of the bear art toy could be invoked, which would allow to overcome a protection limitation to specific goods and services, applicable to non-famous trademarks. What we know is that the “Heroo” trophy was replaced shortly before the Austin GP to avoid legal disputes.
These events date back a few weeks and came to mind when I checked one of the ITPTO’s (UIBM) latest Bulletins and found the publication of a trademark registration application representing the figure resembling Mickey Mouse with a helmet with the wording “HEROO” (n. 302024000112012 of July 11, 2024, in class 42 for design and graphic services), of which the aforementioned Italian designer is listed as the owner.
The registration application must first overcome the opposition period. A spontaneous question arises regarding the existence of prior rights: could the rights opposed to using the trophy at the Austin GP also apply in Italy? If so, what kind of rights are they? Could the figure of the bear art toy have become a well-known trademark (art. 6bis of CUP) and thus enjoy protection even with no limitation to specific gods and services in Italy? Are there copyright rights for the bear art toy figure? Certainly, the type of right to oppose greatly influences protection strategy: administratively, at the ITPTO (UIBM), we can assert famous trademarks but not copyright rights.
But let’s go further and assume there are no impediments in Italy for trademark registration. Then the question will be different: how will this trademark be used commercially, which seems to want to be a three-dimensional trademark but does not appear as such in the request submitted to the ITPTO (UIBM)? Will there be issues related to non-use or use in a form different from that registered?
If we broaden this issue even further and extend it to using 3D trademarks in their two-dimensional (figurative) form, I recall a recent case where using a three-dimensional trademark was proven through using a two-dimensional trademark since the protected shape was clearly intelligible in the figurative mark and easily recognizable by the interested public (case 14/12/2022, T-553/21, FORM EINES SMILEYS (3D), EU:T:2022.813). Will this also apply in reverse?
