Designs and Models

– Legislative Decree No. 30 of February 10, 2005 (Industrial Property Code), as amended by Legislative Decree No. 131 of August 13, 2010, by the Decree of November 13, 2019, and by Law No. 102 of July 24, 2023, in force since August 23, 2023.
– Decree No. 33 of January 13, 2010 (Implementing Regulation to the Industrial Property Code).

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Locarno Agreement Establishing an International Classification for Industrial Designs.
– Hague Agreement Concerning the International Registration of Industrial Designs, Stockholm Act, and Geneva Act as of March 14, 2024.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 20, 1977.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since February 11, 1978.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Directive No. 98/71/CE of the European Parliament and Council of October 13, 1998.
– Council Regulation (EC) No. 6/2002 of December 12, 2001, on Community Designs, in force as of March 6, 2002.

Filing

Applicant (who may be): the author or his assignee (individual, firm, company).

Appointment of author: not compulsory.

Definition of designs: i.e. the appearance of the whole or a part of a product. A design, besides being novel, must also have an individual character. The same article may be covered simultaneously by a utility model and a design, and if the design thereof has a creative character and an artistic value, also by copyright.

Series applications: ornamental designs can be registered by series in a single application provided they fall within the same class of the classification established by the Locarno Agreement.

Novelty: absolute-relative novelty. Novelty is not destroyed by prior disclosure events which could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned within the European Union; a disclosure of a design by the author in the twelve-month period (grace period) preceding the filing date (or the priority date, if any) is not a bar to novelty.

Priorities: multiple and partial priorities admissible; a priority claim be filed within one month from the filing date of the design application.

Internal priority: admissible as of July 31, 2009.

Laying open to public inspection: designs are laid open for inspection after filing unless a petition is filed requesting that availability to the public is delayed up to a maximum term of twelve months from the filing date or the priority date, if any.

Territory covered: Republic of Italy and Vatican (Holy See).

Filing requirements for an application (to be sent to registered resident agent):
1. Unlegalized power of attorney (term for late filing: two months);
2. Specification in Italian (also accepted in any other language, provided an Italian translation is filed with the Patent Office within a given time limit); for designs, a detailed title is generally sufficient;
3. Drawings in duplicate (prints, photographs or any other reproductions) and file copy. Size: 21 x 33 cm. Photographs of a smaller size can be pasted to sheets of paper of the proper size. In the case of textile products, e.g. fabrics, samples can be filed instead of representations;
4. In Convention cases only: certified copy of the foreign design application including drawing or reproduction and specification, if any (term for late filing: six months). A word by word Italian translation must be attached thereto.

Electronic filing: available since June 1, 2006.

For a change of name or address: scanned copy of the document attesting the change. Legalization is not required.

Granting, Protection

Examination: only formal; no novelty examination.

Delivery of document: at present, approximately one year after the filing date. The registration certificate is issued in electronic format only.

Duration of protection: twenty-five (5 x 5) years, running from the filing date of the application.

Beginning of protection: as of the date on which the application is laid open to public inspection. Exclusive rights can be enforced even before against any third party to whom a copy of the application has been served.

Marking of goods: not compulsory.

Recommended marking: “Modello depositato” or “Mod. Dep.”.

Amendments of registered designs: possible by restricting the scope thereof.

Revocation: only by the decision of a specialized court.

Assignments and recordal of license agreements: see above under “patents“.

Working: no working obligation.

Infringement: must be prosecuted by an infringement action brought before one of a limited number of specialized courts.

Penalties: infringement is also a criminal offense and may also be prosecuted by a criminal action.