Register a design in Italy, in the European Union and internationally

Biesse is an Italian IP firm with highly professional trademark, patent and design attorneys qualified, fully registered and insured through Italy and Europe. Our patent attorneys advice on the best strategy to adopt in terms of intellectual rights protection on designs and enhancing.

A registered design grants legally enforceable intellectual property rights to its proprietor and can be used to impede others to create and market the same or similar designs and to cease the fraudulent activities like unfair competition and similar. The term “design” refers both to the external aspect of a given product.

Our patent attorneys advice in cases of industrial rights’ enforcements follows directly after the litigation process, as technical advisors on the matter.

Thus, it is advisable to seek the attendance from specialised attorneys with proven experience and who are capable of assisting you to define the best protection strategy. We, at Biesse, work hand in hand with our clients to protect their designs.

These are some examples of design protection filed by Biesse for our clients:

Protect a design in Italy

A design can be registered by submitting an application to the Italian Patent and Trademark Office (UIBM) and in this case would be valid within the territory of the Italian state.

According to the Italian Industrial Property Code IPC, rights conferred by the registration are extended to any design or model that does not create in the informed user a generally different impression, considering the margin of freedom of the author when providing a design or model.

The duration of protection is 5 years commencing from the date of submission of the application and can be extended, for one or more five-year terms, up to a maximum of 25 years.

One application can be used to apply for the registration of up to 100 designs or models, as long as they can be included in the same class of the Locarno international classification for industrial designs and models. A design should be filed within 12 months from the date of first public disclosure, for example, in the form of flyers, pamphlets, internet and tradeshows, etc.

Register a community or a European design and an international design

A company intending to export its products across Europe, or intending to license the production or sales of the products in question, should obtain design exclusivity rights in the countries of interest.

Essentially, there are three ways for obtaining the protection of a design in a European or an extra-European country:

• file several national registration applications in various countries, each separate and independent from the others;
• register a community design in the European Union: one filing at the European Union Intellectual Property Office (EUIPO), allows protecting rights in the 28 countries members of the European Union; the duration terms and requirements are substantially identical to those provided for by the Italian law;
• a single “international design or model” can be filed, at the World Intellectual property Organisation (WIPO), thus obtaining – in all contracting countries (Italy included) – the same protection that the model would obtain from single filings intended for every single country; the European Union can be designated within an international registration, thus obtaining – within the territory of the Union – the same rights of a community model or design.

Other forms of design protection: unregistered community design, copyright rights, three-dimensional trademark

There are other forms for protecting the external characteristics of a product, like a temporary protection, a copyright protection, a three-dimensional trademark.

Within the European Union, it is possible to obtain a temporary protection for designs or models not registered, for three years starting from the date in which the design or model was disclosed on the territory of the European Union. The unregistered community design allows a company to perform commercial tests on the market without incurring the registration costs, bearing in mind that it is however impossible to continue with the registration after 12 months from the disclosure date. The rights deriving from the unregistered design or model are however difficult to enforce before the judicial authorities and the protection granted to an unregistered design or model is much lower than the certain and potentiality long-term protection provided by a registered design or model.

A further tool provided by the regulation in force, which can be used alongside with the registration as a design or model, is the copyright protection. This right, which lasts up to 70 years after the death of the author, can however be obtained only in the cases where the design or model per se has creative character and artistic value and it can be enforced only against voluntary infringement of the creation.

In addition, if a design has – in the reference market – the trademark function, i.e. it attains the main effect of distinguishing it from other competitor products, it can also be protected by a three-dimensional trademark or shape trademark. This also applies in the case in which the design, more than an essentially aesthetic or ornamental value, has an unusual, arbitrary and merely fantasy shape that confers it a distinctive characteristic. This is the case, for example, of the frusto-conical bottle of the Campari Soda appetizer and the historical Coca-Cola glass bottle, deemed registrable as trademarks.

Lastly, a design is also protected by the unfair competition regulations that defend the owner against acts of slavish imitation, exploitation of reputation, commercial practices susceptible to creating confusion in the consumer.