Model Designs insight

REGISTERED DESIGNS AND MODELS

ORGANISATION OF THE FIELD

With the Legislative Decree dated 2nd February 2001 (which actuated Community Directive 98/71/CE dated 13th October 1998 designed to establish a unitary set of regulations concerning industrial designs and models within the European community), a new body of legislation has been introduced in Italy to replace the pervious regulations which were part of Royal Decree n. 1411 dated 25 August 1940, and subsequent modifications.

The new regulations define their subject matter as follows: “the term ‘design’ or ‘model’ refers to the appearance of an entire product, or part thereof, which is a result, in particular, of the distinctive features of its lines, contours, colours, shape, texture and/or the materials of which the said product is made and/or its decoration”.

Still quoting the new regulations, it can be inferred that “the term ‘product’ refers to any goods, whether manufacturer or constructed by craft methods, including, what is more, components which require assembly to form a complex product, the packaging, the presentation, the graphic symbols and fonts, excluding computer programs”; ‘complex product’ means “a product formed of several components which can be replaced, allowing their disassembly and reassembly”.

REQUIREMENTS THAT MUST BE MET TO OBTAIN PROTECTION

NOVELTY

The product must be brand new throughout the world.

This novelty is the ability of the new design or model to differ from any other design or model known of prior to the registration of the new application or before its priority date, if claimed.

There are, however, some exceptions and in these cases the novelty of the new file is considered intact:

• in the event that it has been disclosed to third parties bound, either implicitly or expressly, to confidentiality;
• in the event that it has been disclosed by the author or his assignee during the twelve months prior to the submission of the application or to the priority date, if claimed;
• in the event that it has been disclosed as a result of an abuse of the author or his/her assignee during the twelve months prior to the submission of the application or prior to the priority date, if claimed.

INDIVIDUALITY

This requirement does not involve any evaluation of the aesthetic value of the design/model, rather it refers to the general impression its appearance gives the user in relation to any previous design or model.

This requirement is intended to free the appraisal of a design or model from all aesthetic standards which, as such, can been linked to fashions, trends, preconceived ideas and other influences. Therefore, a design or model can be said to be individual even if it does not seem to meet the aesthetical standards which are consolidated and accepted for various reasons.

WHAT CANNOT BE REGISTERED?

• Anything which is not new (applying the limits laid out in the point above).
• Anything which is not visible during the utilisation of the product.
• The visible components of a complex product if they do not meet the said registration requirements.
• Designs or models whose form is dictated “solely” by the product’s technical performance.

CAN SEVERAL DESIGNS AND MODELS BE REGISTERED?

Current regulations allow up to one hundred Designs and Models to be registered with the same application. However, these Designs and Models must belong to the same class (from those envisaged by the International Classification of the Locarno Convention).
It follows, then, that applications containing several registrations or containing one single registration for several Designs or Models are inadmissible.

COMBINING PROTECTION FROM OTHER SYSTEMS

COMBINING PROTECTION WITH COPYRIGHT

Unlike in the past, the protection of Designs or Models can also be combined with Copyright protection

With regards to this matter, it should be noted that for a Design or Model to be open to protection via Copyright, it must not only have a creative nature - i.e. it must demonstrate that the author has not copied his or her creation but has accomplished it using their own creativity - but must also have ‘artistic value’; this specification refers to Designs and Models with a particularly high aesthetic value. Note that Law n.293, dated 12 December 2002, sets the term of protection of Designs or Models by means of Copyright at twenty-five years, as of the author’s death.

COMBINING PROTECTION WITH THE UTILITY MODEL PATENT

Another form of combined protection is offered for the registration application for a Design or Model by the application for a Utility Model Patent in the event that the design or model not only meets the requirements of novelty and individuality (already examined in the previous paragraph on protection requirements for Designs and Models themselves) but also that it is capable of increasing its usefulness.

It should be stressed that the two types of protection cannot be combined in a single application, nor, consequently, in a single right.

TERM OF REGISTRATION OF THE DESIGN OR MODEL

The term is five years, as of the registration application filing date, and can be extended for up to twenty-five years, at five-year intervals.