- What to register
- Novelty search
- Types of model: the multiple model
- Classification of goods
- Who can register a model
- How long it lasts
- In which countries it is protected
Registering a model able to protect you completely is not simple since it requires specific competences and is strongly inadvisable to proceed without the help of an expert.
Any form or design that does not need technical arguments can be registered as a model and the protection offered by the registration is bound to what is filed, therefore the preparation of an application for a model registration requires particular attention.
Basically, the protection offered by the model is delimited by the representation of the model that is attached to the filing application and that can consist of a design, of a picture or, in the case of a flat object, also of a sample.
In order to file an application for a model registration it is advisable to resort to the services of an expert in the field that knows how to give the best advice on how to do the filing. The choice of a “view” rather than another one, as well as the decision to highlight some traits rather than others, are fundamental elements to be able to extend afterwards the protection of the model in the widest possible way.
Filing samples or pictures is, without any doubt, easier and sometimes also advisable, but this choice can determine a limited protection to that particular reproduction in its entirety, not being possible to highlight the more characteristic elements thereof that can also be the only ones of interest.
In fact, we remind you that the Italian Office, like most Offices, does not do a novelty search, therefore a model can be granted even if there already exists an identical model registered before.
Nevertheless, the searches on models are rather difficult and sometimes very expensive since researchers have to compare among them not words but images that not always are reproduced or classified in an adequate manner.
A first screening can be made on the databases accessible online, but for a thorough examination it is necessary to be assisted by an expert. The interpretation of the result of the search, which can be done only by a specialized consultant, given the particularity of the subject, is even more complex.
At Italian and Community level, two types of filing are foreseen: the filing as a single model or as a multiple model.
- SINGLE MODEL – the application has as its object a single model, in a single sample;
- MULTIPLE MODEL – In this case, it has as its object more models but of the same type or, better, belonging to the same classification of goods and services.
With the multiple model the model of a ring and the design of a fabric cannot be registered with the same application because they are very different products. Ten types of different rings or of different fabrics instead, can be registered.
When a model or design is filed, it is necessary to identify to what class of goods the model belongs by using the Locarno Classification.
The classification has only administrative purposes and is needed to consent the search in the designs and models database. The indication of the products and the classifications does not influence the measure of the protection of the design or model.
The Locarno classification is particularly important to establish the validity of a multiple ornamental model filing that is admitted only if the objects in which the model or design is incorporated are within “the same class” of the Locarno classification.
A legal person or a natural person that does not have a VAT number can register a model.
A model can be filed in the name of more than one person in case the model is a product of the creative work of more than one person.
After the maximum period of 25 years, or in case one of these taxes in not paid after a period of 5 years, the model lapses.
When a model is filed it is necessary to choose whether to file an Italian model, valid only in our country, a Community model, valid in all the countries of the European Union and automatically extendable also to all those countries that will take part to such a Union in the future, or an International model, valid in all the states that have adhered to the relative agreements. Last, it is also possible to file an application for the registration of a model in each foreign state singularly.
The choice depends on strategic reasons and is made on the basis of the use that is intended to be made of the model and of the potential markets.
It should be kept in mind that from the filing of the first model application there is a period of six months (so-called priority right) within which it is possible to file the model abroad, and thus it prevails over eventual identical models filed in the preceding six months. This allows to initially file an application in Italy and then extend it in a subsequent moment.
This right consists of the faculty offered to the holder to file the same model in one or more states different from the initial one without being compromised by eventual filings that have taken place previously with respect to the filing in the new state, but subsequently to the first filing.
The priority right for models is of six months from the filing. Therefore, if a model is filed on 1 February in Italy, for example, the same model can be filed on 20 July in France, and can be obtained even if any other had filed the same model in France in June of the same year.
Thanks to the priority right, in fact, the June filing would not cancel the novelty to our model of July, which would “date back” to 1 February, the date of the first filing.
The priority is an interesting mechanism that serves to avoid abuses and to allow the holder to reflect and evaluate the states of possible extension.