Information / Faqs

FAQ - Italian and community designs

What is a design?

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.

What’s the difference between registered and unregistered designs?

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“.

Does the Community design prevail over national 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.

How does the Community design compare with national design registrations?

The Community design system offers a single avenue to uniform protection in all of the European Union’s 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.

Is it possible to defer publication of a design application?

It is possible to defer publication of an Italian design or Community design application for up to 30 months from filing; deferment of publication must be requested upon filing the application.

Can a design be registered if it is already in use?

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.

Which remedies does Italian law provide against infringements of design rights?

Italian law provides several tools for the enforcement of rights arising from utility models: the most frequently used is the action for infringement before the competent court. However there are also other, quicker but nonetheless effective enforcement means:

cease and desist letter: sometimes a letter notifying the infringer of the existence of the utility model and warning of the holder’s intention to enforce its rights is enough to put a stop to the infringing activity;

seizure of counterfeit goods or an inhibitory injunction prohibiting further marketing and manufacturing: these measures, as well as a description order (see next paragraph), can be issued by a court upon request both before and during a legal action. Such measures, if granted, are extremely effective;

description order: it is an evidence-gathering procedure that the court can grant upon request in order to obtain evidence of an alleged infringement. The description is carried out by a bailiff and can take place during a trade show, with obvious bias for the counterfeiter;

criminal proceedings: intentional infringement must be proved; fines and seizure of products may apply.


Does a registered design enjoy protection under copyright law?

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.

How can the date of first disclosure be proved?

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.