Who can apply for and own a design?
Any natural or legal person of Italian or foreign nationality (the author of the design or his or her assignee) may apply for an Italian design.
Foreign applicants may only be represented professionally by qualified attorneys holding Italian Industrial Property Consultants Institute membership, or by attorneys at law.
The appointment of an author is not compulsory.Scope
What may and may not be protected?
A design may be registered if it is new and has an individual character. A design is new if no identical design has been made available to the public before the date of filing of registration or the date of priority. The design has an individual character if the overall impression it produces on an informed user differs from the overall impression produced on such user by any design that has been made available to the public before the date of filing or the date of priority. The degree of freedom of the designer in developing the design is taken into account to assess the requirement of individual character.
The design is not considered to be disclosed if it is made available to the public (also at an exhibition) by the designer during the 12-month period preceding the filing date of the application or the date of priority. That said, Italian law defines ‘design’ as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and materials of the product itself or its ornamentation.
In particular, providing the fulfilling of the requirements of novelty and individual character, any two and three-dimensional products and their visible parts, packaging, graphic symbols and typographic typefaces may be protected.
It is also possible to obtain protection on figurative designs to be applied on products as a decoration or characterisation, such as particular stitching, the shape of a pocket or of other parts of articles of clothing or designs that can be applied thereto are registrable.
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.
Considering that in the automotive industry the design of each product is an important tool to protect such as parts of cars like wing mirrors, bumpers, bonnets or lights, if they are visible during the normal use of a complex product, can be registered as a design but will have limited protection. It is possible to produce and sell such registered parts specifically to repair an original product without infringing the registered design. This specific protection of spare parts is in addition to the possible protection of a car as a whole.
No design rights subsist in designs dictated by their technical function, or in features of a product that must be reproduced necessarily in their exact form and dimensions (including the spare parts) to connect the product to another product so that either product may perform its function. Specific materials cannot be protected by a design.
This exclusion from protection is motivated by the goal of preventing technological innovation from being hampered by granting design protection to features dictated solely by a technical functionality and to allow the interoperability of products of different origin. However, the ‘must fit’ clause only covers designs for which there are technically no alternatives as regards the shape of the design. If there are alternative forms for the design, then this design can generally be protected as a Community design. With specific regard to the automotive industry, common examples of ‘must fit’ designs are exhaust pipes or coupling sleeves.Costs
What are the costs involved in registration?
Presently, the official fees for the filing of a design in Italy are €100 for a single application and €200 for multiple applications plus a stamp of €16 if a power of attorney is filed.
It is possible to claim the priority of an earlier first design filed in a member country of the Paris Convention within six months of that first design 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.Grace period
Is there a grace period for filings?
Concerning the grace period, a design is not considered disclosed to the public if it is made available to the public (also at an exhibition) by the designer during the 12-month period preceding the filing date of the application or the date of priority.