Registration protects the design in the entire Italian territory (for a total of roughly 324,000 square kilometers and about 60 million inhabitants) and in the State of San Marino, and may be recognized in the Vatican City.
Designs must be new and have individual character, meaning that the overall impression produced by the design on the informed user must differ from the overall impression produced by any design previously made available to the public.
Bi- and tri-dimensional industrial and handicraft items and their visible parts, packaging, get-up, graphic symbols and typographic typefaces fulfilling the requirements of novelty and individual character.
The range of registrable products is actually quite vast, including figurative designs to be applied on products as a decoration or characterization. The weft of a fabric, an unusual visible stitching, the shape of a pocket or of other parts of articles of clothing or designs that can be applied thereto are registrable, as are marks consisting of graphic elements which are not registrable as trademarks or are used only temporarily, etc.
Components of complex products are registrable only if they remain visible during normal use by the consumer and if the visible features of the component fulfil the requirements as to novelty and individual character.
No design rights subsist in designs dictated by their technical function, or in features of a product which must be reproduced necessarily in their exact form and dimensions in order to connect the product to another product so that either product may perform its function.
It is possible to claim the priority of an earlier first design filed in a member country of the Paris Convention within 6 months of that first design’s filing date. If, however, it is a first filing, the design application can be the basis for a priority claim when applications for the same object are filed in other countries party to the Paris Convention.
Who May Apply for an Italian Design Registration
Any natural or legal person of Italian or foreign nationality (the author of the design or his assignee) may apply for an Italian design.
Applicants may only be represented professionally by qualified attorneys holding membership in the Italian Industrial Property Consultants Institute, or by attorneys-at-law.
Where to File the Application
Design applications may be filed in Italy, at the Provincial Offices of the Ministry of Industry or at the Italian Patent and Trademark Office (IPTO).
Novelty – Disclosure
Novelty must, as a rule, be absolute: disclosure by third parties of the design before the filing date of the application for design registration or before the priority date can make the registration void. Disclosure of the design on the part of the author does not prejudice novelty providing that the application is filed within 12 months following such disclosure. Moreover, registrability of a design is not prejudiced by disclosures that are not reasonably available to specialised and interested circles during normal trade within the European Union.
With a single application for multiple designs it is possible to request protection for a group of designs as long as they belong to the same class of goods of the international classification of Locarno on designs.
Accessibility to Third Parties
On filing the application, the applicant may request that the application be made accessible to third parties only in a subsequent period which cannot exceed 30 months from the filing or priority date.
Rights Conferred by the Application
After filing, or after the date on which the application was made accessible to third parties if subsequent to the filing, the applicant can prevent third parties from using the design, initiate court actions and request interlocutory injunctions.
The IPTO carries out an examination to verify the fulfilment of the formal requirements for registrability. It does not examine the novelty of the design.
No opposition procedure currently exists.
The grant of design registrations takes place about 6 years after the filing of the application, but exclusive rights can be exercised also pending the grant.
Duration and Renewals
Design registrations have a duration of 5 years following the filing date. Renewals are possible for a maximum total duration of 25 years.
Maintenance fees for Italian design registrations can be paid in 4 5-year instalments as from the first fige-year period with respect to the filing date.
Licensing, Assignment, Rights of Security
Licensing and assignment is permitted for designs, which may also be used as rights of security.
Unregistered Design Rights
Under European Community law, unregistered design rights, which afford a certain degree of protection even in the absence of registration, are acquired automatically and with no need for formalities. The unregistered design right is more limited in scope as well as duration (3 years) than the registered design right: the essential features of both forms of protection are compared in our table “Registered/Unregistered Italian designs”.
Term for Registration of Disclosed Designs
There is a term to be observed for the regsistration of disclosed designs: within 12 months from the design’s first disclosure, it is necessary either to seek registration (term of protection up to 25 years) or else only unregistered design rights will be recognised (term of protection 3 years from first disclosure).
Designs possessing creative character and artistic value are eligible for protection under Italian copyright law regardless of whether they are also protected by registered design rights. However copyright protection does prevent the manufacturing or sale of products made according to designs and models which were in the public domain before 19 April 2001, either because they had not been registered, or because registration rights on such designs had expired. The manufacturing and sale of such products is allowed to continue within the limits of prior use.
An Italian design application or registration gives the owner the right to request customs protection, involving the seizure of counterfeit products at customs.
Applicable International Agreements
The Paris Convention, The Hague Agreement on designs and the TRIPs Agreement (World Trade Organization members).