Registering a design or model protects the aesthetic aspect of a product, giving its holder the exclusive right in the designated territory upon filing an application.
In order to protect a design on the market, an entrepreneur must:
- keep it secret precisely by virtue of one of the requirements of registrability – novelty – in addition to individual character (art. 35 of the Italian Industrial Property Code);
- ensure that others have not already registered or disclosed (through exhibitions at trade fairs, advertising, catalogues and industry magazines) identical or similar designs that may conflict with what is to be registered.
Therefore it’s best to first proceed with an availability search of the design.
Preliminary phase: registration availability
This search can be carried out at national, Community or international level in the databases of the relevant bodies (UIBM, EUIPO, WIPO), but it is also useful to extend the search to various means of dissemination.
Once the design’s availability has been certified and the usefulness and suitability of its filing have been assessed, you can proceed with the application for national, Community or international registration.
Design or model registration application
The protection of designs has a territorial nature, thus it is only valid within the borders of the countries where registered.
Regardless of its territorial extent, the application must contain:
- the personal data of the applicant;
- a statement of the design or model in the form of a title and the product to which it is to be applied;
- an indication of the reference product class, based on the International Locarno Classification;
- the graphic representation of the design, the purpose of which is to present the design’s characteristics in a clear and detailed manner;
- a text with a brief description of the images and, if necessary, of the shape and colour claims.
The filing can be carried out:
- for only one design or model (single registration);
- for more than one design or model (multiple registration), which is only an option if the designs included in the application belong to the same product class.
The procedure includes the payment of deposit fees and publication fees.
The registered design is valid for five years, renewable every five years with the payment of annuities until the natural expiration of 25 years, after which it becomes public domain.
Therefore, depending on the company’s strategic plan and the reference market of the design or model, a company can choose from the following options.
1) Italian design or model
This produces legal effects only in Italy.
When the application is filed with the Chamber of Commerce in paper form or with the UIBM also electronically, the deposit fees are paid at the same time.
The application must be drawn up in Italian, and if it includes documents in a different language, the applicant must provide their translation into Italian.
2) EU design or model
This consists of a single application that produces legal effects throughout the European Union (including Italy and excluding the United Kingdom, now outside the EU).
The application is filed with the EUIPO electronically, which is preferable compared to a paper application as it optimises (reduced) costs in a single application (which also includes several designs) to be drafted in one of the following languages: English, French, Italian, Spanish and German.
The filing fees must be paid upon filing the application, starting at 350 euros for the first design (cost that is reduced in the case of multiple filing), to which publication and deferral costs are added.
For business strategy reasons, it is possible to request the deferral of the publication of a design for a maximum period of 30 months from the filing date (or priority date).
3) International design or model
This produces legal effects simultaneously in all the countries which are parties to the Hague Agreement.
The application can be filed (in English or French):
- directly with the International Office, WIPO;
- with the national administration of the relevant contracting country (for example, the UIBM for Italy), thus applying the national legislation