For the purposes of Italian design and Community design registration, a design is the external appearance of a product or part of a product as it results from its lines, contours, colour, shape, texture, materials and ornamentation. A product is any bi- and tri-dimensional industrial and handicraft item, including packaging, get-up, graphic symbols and typographic typefaces. Components of complex products are considered registrable as designs only if they remain visible during normal use by the consumer.
In Italy, as in all other member states of the European Union, the author of a design has the exclusive right to prevent its unauthorised use. Unregistered designs can only be protected against intentional imitations, but the exclusive right does not extend to independent works of creation of a designer who may reasonably be thought not to be aware of the protected design. Moreover, the term of the unregistered design right is 3 years only, not renewable, from the date on which the design is first made available to the public within the European Union. If the design is registered, the exclusive right extends to unintentional copying, and the term of the right is 25 years (see also our tables “Registered/Unregistered Italian designs” and “Registered/Unregistered Community designs“.
The Community design system coexists with European national registration systems. This means that earlier national designs constitute earlier rights against a Community design and vice versa. Moreover, it means that national registrations in single European Union member states may be sought as an alternative to Community-wide protection throughout the Union.
The Community design system offers a single avenue to uniform protection in all of the European Union’s 28 member states (Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Croatia, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, the Netherlands, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden). The Community design also offers simplified formalities, including a single application, a single language, and single payments. Last but not least, a Community design registration costs much less than the cost of national design registrations in each of the European Union’s member states.
A design that is already in use can be protected with an Italian design or a Community design registration if the application is filed within 12 months after the first disclosure of the design, as long as the disclosure is made by the design’s author or with his consent.
The Italian legal system provides for injunctive relief which can be requested and applied expeditiously enabling design right holders to protect their rights against infringers. Even before the infringement case is heard in court, the right holder may request the judge to grant an inhibitory order, i.e. an order to cease the allegedly infringing activity and/or to seize the allegedly infringing items.
Under Italian copyright law, designs possessing creative character and artistic value are eligible for protection 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.
First disclosure of a design may be proved, for instance, by invoices for the first sale of a product, by advertisements, by evidence that the design was on display at fairs and exhibitions, etc. All evidence must bear a date.