The Italian design

How to file a model valid in Italy

  1. Preliminary choices
  2. How to file an Italian model application
  3. The registration procedure
  4. Appeals against the decisions of the Office
  5. Withdrawal and limitation of the application
  6. Model Assignation
  7. Regulations
1

 Preliminary choices

Read this paragraph before proceeding with the filing a design in Italy

Before filing a model, it is necessary to choose how to file it. If you have not done it yet, we suggest you read the section Registering a model, which gives useful advice on the matter.

Once the preliminary analysis has been done carefully and, as it is always advised, with the help of an expert consultant in the field, the filing of the application for registration can be done.

There are two types of application: the single filing application and the multiple filing application which can be used to register more models belonging to the same class of the Locarno Classification.

The application can be made only telematic by a specific platform which requires the digital signature.

The operation is not that simple and we suggest resort to an expert in the field. As an alternative, it is possible to resort to the Chamber of Commerce which does not offer advice but limits itself to transmit electronically the application for registration as prepared by the client.

 

2

 How to file an Italian model application

The procedure to file your design properly

To file an application for registration it is necessary to fill in a specific online form which shows:

  • the information on the applicant, who will become the holder of the model;
  • the title of the model;
  • the class of goods to which the model belongs.

As we already said, the choice of the classes has be made on the basis of the Locarno Classification paying attention to check the edition in force at the moment of the filing of the application.

The graphic representation of the design or model or of the products bearing it has to be attached.

A description of the model with its claims can be attached if it makes more understandable the model.

With a single application of a multiple model can be registered up to 100 designs or model if they are used with or in objects that are part of the same class of the international classification of designs and models of the Locarno Agreement, paying the same fee.

One or more samples of the model will have to be attached to the application, depending on whether it is a single or a multiple model. Of each model more than one view should be filed (plan, lateral, axonometric).

The filling in and the sending of the application for registration of a Community model may seem simple but the difficulty is not lie in the procedure but in the efficacy of the registration.

The efficacy of the model lies in the preliminary choices that have to be made BEFORE filing the application, in the choice of the classes and in the strategies for its protection.

According to the choice that has been made, administrative fees and official fees which vary on the basis of the type of model have to be paid. To know the fees in force at the moment of the filing of the application, we suggest you consult the Italian Patent and Trademark Office’s website.

To prepare well the application for registration is as important as to analyze well the model before filing it since, on the basis of these preliminary choices, the possibility of defending the trademark in case of infringement is higher or lower.

Once the model is granted, it will receive a date of grant and the holder can to collect the certificate.

Ufficio Brevetti - Design: how to file a model in Italy
3

 The registration procedure

All the phases of the bureaucratic procedure

Once the application for registration has been filed, an application number and date are obtained. From that date starts the examination of the file, which is limited to the formal aspects.

The UIBM does not do any search to evaluate if the modelis new and has individual character.

If after a first formal and technical exam, the UIBM finds some anomalies, those will be communicated to the applicant who has 60 days to answer.

For designs, unlike trademarks, no opposition phase is foreseen, therefore models are often granted very quickly.

Once the model is granted, it will receive a date of grant and the holder can to collect the certificate.

The model has an initial duration of 5 years that start from the filing date but can be renewed every five years by paying a specific fee and postponing its duration up to a maximum of 25 years.

Ufficio Brevetti - Design: the registration procedure
4

 Appeals against the decisions of the Office

What to do in case of rejection

Against the regulations of the UIBM with which the office refuses, totally or partially, an application filed, it is possible to file an appeal with the Appeals Commission (art. 135 CPI).

The Appeal Commission is composed of magistrates and professors appointed by the Ministry of Economic Development. The judgements of the Commission may be contested before the Supreme Court.

Given the nature of the procedure, it is necessary to be represented by an attorney or by a IP agent not only for the difficulty of the subject but also because it is foreseen by law.

5

 Withdrawal and limitation of the application

If needed, here how to proceed

At any moment between the filing of the application and the grant of the model, who has filed the application can always withdraw it (and therefore renounce to it) or limit it, for example by reducing the number of models in a multiple model.

It may be necessary to withdraw or limit the model, for example, when there is a conflict with a third party that claims pre-existing rights or when it has been kept in secret state and the publication thereof wants to be avoided.

Any amendment of the model application can be made within the precise limits but without changing the or extend the substantial protection of the model.

An amendment not just allowed but due is that relative to the change of address of the holder of the model.

Changes in the registry, withdrawals and limitations have to be communicated to the office by filing a specific petition for recordal.

Ufficio Brevetti - the italian design
6

 Model Assignation

How to assign a model or a licence to a third party

A model, apart from used, can be assigned or licensed to third parties.In the first case, it is something similar to a sale, by which the model changes “owner”; in the second case, it is a sort of “rent” with which the use to third parties is granted.

The model assignment contracts are very delicate. In fact, it is necessary to have a wide knowledge of the model that is being sold, but above all purchasing, therefore a technical analysis is appropriate for checking that the model is alive, that there are no potential or real conflicts, that there are no co-existence agreements and the like.

All that is obtained by making the model undergo an accurate analysis (the so-called due diligence) without which there is the risk of purchasing an “empty box”. Another relevant aspect is that of the value of the model, that is not easy to assess without the help of an expert.

The assignment, or license, of a model has to be recorded with the UIBM with a specific petition for recordal. The recordal is necessary for the effectiveness in front of third parties and above all to safeguard the acquiring or licensee party.

7

 Regulations

If you want to learn more, here the link of the complete regulation

D. Lgs. 10.02.2005 n. 30 (Property Industrial Code)