The Design

  1. What is a design
  2. What can be registered as a model
  3. The validity requirements of the model
  4. The exclusive rights of the holder of the registered model
  5. Registration, duration and renewal
  6. The non-registered model

1. What is a design

The design is the form of a product that is protected with the registration of a model or design, briefly called model registration. Intellectual property laws states precise requirements to proceed with a model registration and protect design in Italy.

With the registered model the form of a product is therefore protected. It does not matter if said form is nice or ugly, since beauty and ugliness are relative concepts but it is necessary that it presents an individual character, which means that by its own characteristics it is different from all the others. Apart from the form of the product a design, a decoration or any other bi-dimensional element can be registered. The model protects the non-technical aspects of the product. The protection offered by the model registration concerns the external, decorative aspects, and not the practical and functional aspects. Thus, a toaster can be patented if it is realized with a particular system that allows to heat the bread in a particularly efficient way, but protection as a design can also be obtained for it in connection with its external aspect.

The protection of the design is becoming always more important since it is often the form to play a fundamental role in the success of a product, as it is precisely the form that often attracts the consumer and that is memorable in time. It is very important to register as a model or design the design of a product, and the registration allows to defend oneself from imitations easily and quickly.

2. What can be registered as a model

Design in Italy is governed by art. 31 CPI (Industrial Property Code), which states that the following can be registered as design or models: «the aspect of the entire product or of a part thereof that results, in particular, from the characteristics of the lines, of the contours, of the colors, of the form, of the surface structure or of the materials of the product itself or of its ornament, on condition that they are new and that they have individual character.» Any external and visible feature of a product that is new and that renders that product recognizable with respect to all the others can therefore be registered as a model. The following can be registered as a model: the shape of a bag, of a car, of a bottle, of a packet of chocolates, of a door, of a table and of any other object. The design of a fabric, the decoration on a piece of furniture, the lines of a map and any design that can be incorporated or applied on a product can be registered as well. The only limit is represented by the technical function of the model, which cannot be protected.

Art. 36 CPI expressly foresees that «1. Those characteristics of the aspect of the product that are only determined by the technical function of the product itself cannot constitute object of registration as a design or model.» The forms that can be protected are therefore the “capricious” forms that do not have any technical function but that represent a choice of style.

3. The validity requirements of the model

A model, to be valid, has to be NEW, LICIT and provided with INDIVIDUAL CHARACTER. Art. 32 CPI establishes that a model is new «if no identical design or model has been disclosed before the data of filing of the application for registration» and specifies that «design or models are considered identical when their characteristics differ only as regards irrelevant details.»

Unlike what is foreseen as patents are concerned, a design or model is not considered as disclosed when it has been rendered accessible to the public within the twelve months before the filing date of the application by its author (Art. 34 CPI). Therefore, the author of a design has substantially twelve months of time to file his model. Nevertheless, it should be noted that this arrangement concerns the Italian and Community regulations but is not accepted by all the regulations, which means that in order to avoid that the disclosure of a model compromises the possibility of registering it, it is adequate to file the application for registration before displaying it in public, for example at a fair or on catalogs.

A model has to be also licit and therefore not contrary to public order and good behavior, but above all it has to be provided with individual character and therefore be as original as possible and different from the design known up to that moment.

To establish when a model has an “individual character” is not always easy. Art. 31 CPI states that «a design or model has an individual character if the general impression that gives to the informed user differs from the general impression given in such a user by any design or model that has been disclosed before the filing date of the application for registration or, if a priority is claimed, before the date of such a priority.»

To understand if a model has an individual character, it is necessary to know the models known up to the moment of the filing for that type of product and ask oneself if an “informed user”, often identified in an expert buyer, is capable of receiving from that model a general impression with respect to the impressions given by other models. It is an interpretative task that is not easy.

It is clear that in fields that are very crowded with similar forms, also very light differences of form will serve to distinguish the product since the margin of choice is inferior, while in freer fields the form of a product will have to move apart significantly from that of another one so that an individual character can be found.

4. The exclusive rights of the holder of the registered model

The holder of the model acquires the exclusive right to make exclusive use of the model and to ban third parties to use it without his consent. In particular, as clearly foreseen by Art. 41 CPI, there constitute acts of utilization «the manufacture, offer, commercialization, import, export or employ of a product in which the design or model is incorporated or to which it is applied, or the detention of such a product for those purposes.»

It is a diffused conviction that to avoid the infringement of a registered model it is enough to change only just an element since the holder could impede the production only of models identical to his own. This is not true, although it is true that in the evaluation of infringement there remains a margin of subjectivity. The same art. 41 CPI states in fact how wide the protection offered by the registered model is and establishes that the rights conferred by the registration «extend to any design or model that does not produce in the informed user a different general impression.»

Therefore, also in order to evaluate infringement we should think of an informed user and ask ourselves if the infringed model furnishes the same impression of the registered model and in the positive case, even if the second model is partially different from the first one, infringement will still exist. It is again a very complex technical analysis that requires great experience.

5. Registration, duration and renewal

The exclusive rights conferred by the law to the holder are obtained with the registration of the model. The rights start from the filing date of the first application for registration of a model and last 5 years, at the expiry of which it is possible to renew the model for further 5 years and so on up to a maximum of 25 years from the filing date of the application for registration. Art. 38 CPI foresees that the author of the design or model or his heirs are entitled to the right to registration. Nevertheless, if the design or model has been realized by a dependent worker and such a work is within his tasks, the employee is entitled to the right to registration, while the employee still has the right to be recognized as the moral author of the design or model. The effects of the registration start from the date in which the application has been rendered accessible to the public, something which is normally verified at the moment of the filing itself unless the applicant requests to keep it secret, in which case it will remain secret for a period of 30 months in the case of an Italian design. Not all the states adopt the same rules as far as the publication of the application is concerned, therefore it is advisable to verify this each time in the country of interest.

6. The non-registered design

The Regulation (CE) no. 6/2002 of 12.12.2001 that has introduced the Community model has foreseen, together with the protection foreseen for the registered model, a more limited protection for the non-registered model.

The non-registered model is any model that has been widely used in a public way but that, precisely, has not been filed by his holder.

In order to be valid, the model has to be new and provided with individual character and therefore meet all the requirements foreseen for the registered model (art. 6 of the Regulation CE no. 6/2002 of 12.12.2001).

The protection offered to the non-registered model is limited both from the temporal point of view and from the qualitative point of view.

From the temporal point of view, the protection is foreseen for a period of three years starting from the disclosure of the model “to the specialized environments of the field operating in the Community”.

From the qualitative point of view, the holder of a non-registered model has the right, pursuant to art. 19, par. 2, of the Reg. CE 6/2002, to ban third parties the production, the sale, the export, the employ of an identical or analogous model “if the contested use derives from the copying of a protected design or model”. This means that, if with a registered model I will be able to defend myself from any form of infringement, if I have only a non-registered model I will be able to defend myself only when there is intentional plagiarism and not only when there will be a casual copy deriving from an independent project.