The Italian Design

The Importance of Registering a Design

The Italian design is an important right for someone operating in the Italian territory and is willing to distinguish their goods from those of the competition.

It has a moderate price and is useful also to those starting a new activity and unwilling to make expensive investments. Having an Italian design is important also for big companies. It is a strong and hard-to-attack right that is, therefore, very useful in forgery cases.

The one filing an Italian design has 6 months to extend it abroad, hooking to the filing date of the Italian design (the so-called priority right), representing thus also a strong base for the following extension.

The Italian design lasts 25 years but at the beginning its protection lasts 5 years and it has to be renewed every 5 years.

Preliminary choices

Before filing a Design application, one needs to choose how to file it and then it is fundamental to carry out a preliminary analysis of the case with the help of an Expert.

When the preliminary analysis has been made, it is possible to proceed with the filing of the application.

There are two types of application: the single model and the multiple model application, the latter used to register a set of models of the same class of the Locarno Classification.

The filing application is sent online through a dedicated platform.

How to file an Italian design application

The filing of a design application requires the filling in of a specific form with the data of the applicant, who will become the owner of the design, its title and the class of which the product is part. 

The choice of the class shall be made by looking at the Locarno Classification and checking that the classification used is the one in force at the filing of the application.

 The graphic reproduction of the design or of the products including it shall be attached.

 The application of a multiple design allows for the registration of more than 100 models on            the condition that they were planned to be created or incorporated in objects as part of the same international design classification, included in the Locarno Agreement, by paying the related fee.   

The professional preparation of the application for registration is as important as the thorough analysis of the model before filing. It is on the basis of these preliminary choices that is played the possibility to defend the design in case of forgery.

The registration procedure

Once the application has been filed, the applicant receives a number and a day of filing that marks the beginning of the examination of the documentation, which is limited only to the formal aspects.

The UIBM does not perform any search to assess the novelty and the individual character of the design.

If, after the first formal and technical examination, the UIBM finds any irregularity, it communicates it to the applicant indicating a deadline to answer.

Since the design registration procedure does not include an opposition phase, as it happens for trademark, designs are generally granted quickly.

Following the granting, the design receives a number and a date of registration and its owner may collect the certificate.

Designs have an initial duration of 5 years starting from the filing day but it can be renewed every 5 years by paying a fee and extending its duration to 25 years.

Appeals to the Office’s decision

One could address the Board of Appeals (art 135 CPI) to appeal against the measures of the UIBM rejecting, totally or partially, a filed application. The Board of Appeals includes magistrates and professors appointed through the Decree of the Ministry of the Economic Development. The judgment of the Board can be challenged before the Court of Cassation. Given the nature of the proceeding, it is required to be represented by a lawyer or an Industrial Property Advisor not just because of the particular difficulty of the subject but also because it is required by the law.

Withdraw and limitation of the application

The applicant may, at any moment, between the filing of the application and its grant – withdraw the application (and therefore to renounce it) or limit it, for example reducing the number of models of a multiple model design. It can be necessary to withdraw or limit a design when a conflict arises with a third having earlier rights or when it is kept secret to avoid its publication. The design may be modified only under precise circumstances and without altering or enlarging its substantial protection. A change not only consented but due is related to the change of address of the owner of the trademark. Personal detail changes, renounces and limitations have to be communicated to the office submitting a specific application of change.

Design transfer

A design can be also transferred or licensed to thirds other than just used. The first case is something similar to a sale: the trademark changes “owner”; the second case is a sort of “rent” where the use of the design is granted to a third party.

Contracts of design transfer are very delicate: they require a wide knowledge of the design that is being sold and, above all, purchased. They require a technical study aimed at checking that the design is alive, that there isn’t any possible or current conflict, that there isn’t any coexistent agreement or similar. All this is attained through a careful analysis of the design (the so-called due diligence), without which one could risk buying an empty box.

Another important aspect is the value of the design, but it is not easy to know this without the guidance of an expert in the field. The transfer, or license, of a design has to be communicated to the UIBM by a specific transfer application. The transfer is necessary for the effect to thirds and above all as a guarantee for the purchaser or licensee.

Norm of Reference

Decree Law no. 30 of February 02, 2005 (Code of Industrial Property)

Giulia Mugnaini - responsabile Marchi&Design

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Dott.ssa Giulia Mugnaini

Head of Trademark & Design Department

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