What is the application process?
To file an application for registration in Italy it is necessary to fill in a specific online form. This form must contain a representation of the design that is suitable for publication and an indication of at least one product in which the design is intended to be incorporated or to which it is intended to be applied, according to the latest edition of the Locarno Classification in force at the time of the filing of the application. A description of the design with its claims can be attached if it makes the design easier to understand.
A multiple design application can register up to 100 designs or models if they are used with or in objects that are part of the same class of the international classification of designs and models of the Locarno Agreement, paying the same fee. One or more samples of the design must be attached to the application, depending on whether it is a single or a multiple design. More than one view of each design should be filed (eg, plan, lateral and axonometric). Once the application for registration has been filed, an application number and date are obtained.
On filing the application, the applicant may request that the application be made accessible to third parties only in a subsequent period that cannot exceed 30 months from the filing or priority date.Examination and appeals
How are the examination and appeals procedures conducted?
The examination stage begins from the filing date and is limited to formal aspects (eg, formal defects, eligible protection, compliance with the law).
The Italian Patent and Trademark Office (PTO) does not conduct a novelty search or evaluate whether there is individual character. Should the office find any anomalies, they will be communicated to the applicant who then has 60 days to reply.
Against the PTO’s refusal decisions regarding a filed application, it is possible to file an appeal with the Appeals Commission. The Appeal Commission is composed of judges and professors appointed by the Ministry of Economic Development. The Commission’s decisions may be contested before the Supreme Court. Given the nature of the procedure, according to Italian law, it is necessary to be represented by an attorney or an intellectual property (IP) agent.Opposition
What are the opposition rules?
It is not possible to oppose a registered design application.Registration time frame
What are the registration time frames?
Once the design is granted, it will receive a registration date and a registration certificate will be issued (presently, approximately one year after the filing date).
The design has an initial duration of five years, renewable up to a maximum of 25 years by paying specific fees, starting from the filing date.Removal from register
In what instances does removal from the register occur?
A design application can always be withdrawn by its applicant at any time between its filing and its grant. It can also be limited, for example, by reducing the number of products in a multiple design. Such withdrawal or limitation may be required, for example, when there is a conflict with a third party that claims pre-existing rights.
Withdrawals and limitations must be communicated to the PTO by filing a specific petition for recordal.
The revocation of the design may occur only by the decision of a specialised court, for example, in the case of an infringement for unauthorised use of the design by a third party.
Requests for a declaration of invalidity of an Italian registered design may be filed only before the specialist IP court of the district where the registered proprietor is domiciled (this may not correspond to the legal seat of the design owner).
The nullity can also be requested via counterclaim before the court with jurisdiction for the infringement issues.