D'Agostini Organizzazione
Design2023-08-29T10:59:57+00:00

Registered design

It protects individual character market positioninvestment

HOW WE PROTECT INDIVIDUAL CHARACTER

Design services

  • Feasibility study, drafting and filing of applications in Italy and abroad.
  • Prior art searches for designs in Italy and abroad.
  • Recordal of assignments and drafting of right transfer and/or licensing agreements.
  • Appraisals on design infringement.
  • Drafting of licensing and/or right transfer, franchising agreements and recordal of assignments.
  • Legal and out-of-court actions in defense of designs in Italy and abroad.
  • Watching to detect the publication of designs of a specific applicant.
  • Extension of registered designs worldwide.

Please do not hesitate to contact us for any questions, requests, information or to receive a personalized quotation.

LINES, OUTLINES, COLOURS, SHAPES, SURFACES AND MATERIALS

The registered design

Designs concern two-dimensional or three-dimensional drawings and shapes. With this type of IP right, only the shape of a product is protected as shown on a set of images and not the idea behind it. Protection extends to the entire product, or a part of it, as resulting, in particular, from the characteristics of the lines, outlines, colours, shape, surface structure and/or materials of the product itself and/or its decoration.

IN ADDITION TO THE EXCLUSIVE RIGHT

Why register a design?

  • The registration of a design for the protection of a product is capable of adding value to the product: in addition to constituting an economic asset per se (being an intangible asset like other intellectual property titles) that can increase the value of the company, the registration of a product provides a solid basis for licensing and commercial exploitation of the product, precisely defining the scope and duration of protection.
  • In a situation of infringement, the presence of a registered design certifies an earlier date and gives an advantageous position: 73 percent of cases end with the owners of registered designs succeed in proceedings for infringement of their own design right.
  • In many cases, companies succeed in making their product stand out precisely because of an original design: registering this design strengthens their position ahead of the competition in the market.
  • Owning a registered design regularizes and facilitates access to new international markets.
  • Intellectual Property titles can be used to access financing/tax reliefs: mention is made, for example, of the Patent Box, which allows access since 2015 to a preferential tax regime for all those companies that obtain revenues from the direct or indirect commercialization of Intellectual Property titles (excluding trademarks).
  • It is a prohibition for a possible competitor willing to copy your product.
  • It is possible to submit a multiple filing (both in Italy and the EU) where different goods belonging to the same classification of goods can be registered with the aim of significant cost savings due to official fees.
  • It is a very useful tool for protecting the packaging of a product.
  • The presence of registered designs and investments in Intellectual Property in general makes your business more attractive to partners and investors and increases your reputation with them.

EXAMPLES OF DESIGNS

Protect the shape of your product

The following can be registered by way of example: furniture, furnishings, sporting goods, household items, tools, buildings, fabrics, garments, graphic interfaces (Software), etc.

ITALIAN MODEL/DESIGN
It is a unique title, with validity in the Italian territory

MULTIPLE FILING
The law allows you to file up to 100 variants of the same model in the same product classification with a single application. In this way you can also protect the possible variants as long as they fall within the same product classification of Locarno

DURATION
5 years, renewable for further 5 years up to a maximum of 25 years.

COMMUNITY DESIGN
It is a single title, with validity throughout the European Union.

MULTIPLE FILING
The law allows you to file up to 100 variants of the same model in the same product classification with a single application. In this way you can also protect the possible variants as long as they fall within the same product classification of Locarno.

Priority
Within 6 months from the filing date of the first application.
Duration

5 years renewable for further 5 years up to a maximum of 25 years, starting from the filing date.
Office
EUIPO (European Union Intellectual Property Office) based in Alicante, Spain.

INTERNATIONAL DESIGN
Any new design that meets the requirements of the national legislation of the countries designated in the application can be registered.

Priority
Within 6 months of the previous national filing.

Duration
It depends on the legislation of each designated country.

Office
WIPO (World Intellectual Property Organization)

FOREIGN NATIONAL DESIGN
Any new design that meets the requirements of the national legislation of the countries designated in the application can be registered.
Priority
It depends on the legislation of each individual country.
Duration
It depends on the legislation of each individual country.

DESIGN FAQ

Learn more about designs

What are the registration requirements for a design?2023-08-24T08:43:23+00:00

DESIGN REGISTRATION REQUIREMENTS

– Novelty: Article 32 IPC states that a design is new if no identical design has been disclosed before the date of filing of the application for registration.

– Individual character, i.e. ability to generate an overall impression different from that aroused by other designs already disclosed (given by the set of lines, outlines, shapes, colours, finishes, materials…).

What kind of examination are designs subject to?2023-08-24T08:45:21+00:00

FORMAL VERIFICATION OF THE APPLICATION

Design applications are subject to a formal requirement check only. The Italian National Office or the European Office do not carry out any novelty searches, unlike, for example, the United States of America.

How do I file a design?2023-08-24T08:46:40+00:00

IDENTIFYING THE BEST PROTECTION STRATEGY

It is necessary to provide us with numerous views of the product to be protected in all available versions in order to enable us to analyse them and identify the most suitable designs as well as the most representative views.

Can I register a design that has already been published or marketed?2023-08-24T08:48:26+00:00

THE GRACE PERIOD

The “grace period” is a 12-month period given to owners of a new design to file the application for registration.

This period elapses between the first disclosure of the new design and the filing of the application for registration: it allows companies to test the success of their design in the market for about one year before applying for registration.

This possibility should be considered with extreme caution, remembering that any disclosure not governed by confidentiality agreements implies a risk for uncontrolled disclosures and potentially risky and competitive behaviour, also possibly invalidating the novelty (if not made by the author), then requiring legal action to regain possession of the IP title.

The grace period is not valid in all countries.

Can I show my design to third parties before I file my application?2023-08-24T08:49:57+00:00

NON-DISCLOSURE AGREEMENTS

If you wish to show a design to a third party before filing your application for registration, you should conclude confidentiality agreements with interested third parties so as to protect the confidentiality of the design by preventing unauthorised disclosure.

What is the Locarno classification?2023-08-24T08:51:19+00:00

LOCARNO CLASSIFICATION FOR REGISTERED DESIGNS

The international classification system for industrial designs, known as the Locarno Classification, is managed by the World Intellectual Property Organization (WIPO) and is used by the various offices to classify the products indicated in registered designs and related applications.

What is the priority right for designs?2023-08-24T08:52:16+00:00

IT DEFINES THE FILING DATE

The owners of a national design have a period of six months from the date of first filing to claim priority in their application for a Community design at the EUIPO. If priority is claimed, in the event that someone else files an application later, the priority owner’s application will take precedence over those of others. In other words, the priority owners will have the opportunity to enforce their intellectual property rights relating to the design before the others.

What are the differences between registered and unregistered design?2023-08-24T08:54:31+00:00

AN UNREGISTERED DESIGN OFFERS UNCERTAIN PROTECTION

 Legal Certainty
In the event of legal action to defend their designs against infringement, the owners of unregistered Community designs must be able to prove the following to third parties:

  1. The date and place of first disclosure of the design.
  2. The relationship between the disclosed design and the contested design.
  3. Knowledge of the disclosure of the design by interested parties.

The “protection” offered by the unregistered design is therefore uncertain, as the owners must be able to prove disclosure and copying of the design in question in order to enforce their intellectual property rights.

Duration
In addition, the protection offered by the filing of a registered design lasts 5 years and is generally renewable up to a maximum of 25. The “protection” given by the unregistered design lasts for a maximum of 3 years and is not renewable.

Availability
The protection of the unregistered design in the European Union is valid only in the territory where the design was made public.

Is it sufficient to change only one element to avoid infringement of a registered design?2023-08-24T08:57:11+00:00

PROTECTION OF THE OVERALL IMPRESSION

No. The registration of a design grants the right holder protection against any design that, for an informed user, produces an overall impression similar to the registered design, as provided for in Article 41 of the Italian Industrial Property Code.

The assessment of infringement requires a complex and detailed analysis to determine whether the infringing design gives the same impression as the registered design, and whether there is still infringement even if the registered design is partially different from the infringing design.

60 YEARS SUPPORTING INVENTORS

Why choose us

TEAM OF INTELLECTUAL PROPERTY CONSULTANTS

The strategic decisions related to your case will be assessed with a discussion among several consultants in order to obtain a more complete view of it and be sure to objectively consider risks and opportunities, taking advantage of the experience of each individual consultant.

A well-established long-lasting cooperation with a network of correspondents around the world ensures the highest quality in the filing and protection of designs abroad.

360-DEGREE EXPERIENCE: FILING, PROTECTION AND COMMERCIAL EXPLOITATION

Our consultants have:
• Knowledge of regulations and decades of experience related to designs.
• Expertise in identifying the best operating and defense strategies in cases of suspected design infringement.
• Experience in defining the best strategies, based on the client’s interests, in the conclusion of agreements for transfer of rights and exploitation of designs as well as for drafting any related agreements (non-disclosure agreements, non-compete agreements, distribution agreements, assignments, etc.).

WHY RELY ON A CONSULTANT TO REGISTER A DESIGN?

The consultants are certified professionals who have precise training in the field of Intellectual Property and are registered with the Italian Institute of Industrial Property Consultants. Their aim is to give value to intangible assets of their customers by helping to generate an economic asset and an advantage overcompetitors.

An IP consultant can suggest the best protection strategy for your products in order to obtain the best protection to counter/avoid infringement. Entrusting the management of the intellectual property portfolio to consultants relieves the company/inventor from the burden of managing the often complicated procedures of prosecution and maintenance as well as deadlines, renewals and payments in Italy and abroad, with greater opportunities to reduce costs.

AN INDUSTRIAL PROPERTY CONSULTANT FOR INITIAL GUIDANCE

Find out how we can provide assistance

Fill out the following form to request an introductory meeting or simply to obtain a personalized quotation.

  • Interview with an IP Consultant
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Guidance Points in Industrial Property

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