Design protection for the protection of aesthetic innovation

(the following section is applicable to design registrations in the EUROPEAN UNION)

A design protects the aesthetic innovation of products and their packaging.

Protectable designs cover: the appearance of the whole product or a part thereof, as resulting from the lines, contours, colours, shape, surface texture, or materials of the product itself or its ornamentation, provided that they are new and have individual character, and are not against public policy or accepted principles of morality.

A product can be any industrial or handicraft object, including, inter alia, components that must be assembled to form a complex product, packaging, presentations, graphic symbols, and typefaces, excluding computer programs.

Design protection is not available for the characteristics of the appearance of the product that:

• are determined solely by the technical function of the product or the characteristics of the appearance of the product necessary to enable mechanical connection or
• incorporation with another product, with the exception of interchangeable products in a modular system.

The registration of a design confers to the owner the exclusive right to use it and to prohibit third parties, except with its own consent, from using it in the manufacture, from offering, marketing, importing, exporting, or using a product in which the design is incorporated or to which it is applied.

The exclusive right shall extend to any design that does not produce in the informed user a different overall impression, taking into account the designer’s margin of freedom in the making of the design.

Design protection shall last for a maximum of twenty-five years, subject to payment of the five-year or annual maintenance fees.

A design may be eligible for protection if it has the requirements of novelty and individual character that must exist at the filing date of the application for registration.

A design is considered new when no identical design has been disclosed to the public prior to the filing of the application for registration. Two designs are deemed to be identical when their features differ in insignificant details.

A design has individual character if the overall impression it makes on the informed user differs significantly from the overall impression made on that user by any design that has been disclosed to the public, prior to the application for registration.

A design shall be considered disclosed if it has been made available to the public by registration, or in any other manner displayed, put on the market, or otherwise made public, prior to the date of application for registration, except for a disclosure by the designer, occurring in the twelve months prior to the date of registration or disclosure to third parties under express or implied covenant of confidentiality.

• perspective views, which show the three-dimensionality of the object providing an integral view of it;
• front, rear, top. bottom, right, and left side views, showing the various perspectives of the object, so as to have a complete idea of its realization.

We assist and represent our clients in the procedure of registering their designs in Italy and abroad, starting with the preliminary verification and evaluation of design registrability requirements, such as novelty, individual character, and lawfulness, through prior art searches and preliminary registrability opinions carried out at the client’s request. We follow all stages, from the filing stage, in which we take special care of the graphic representation of the features to be protected, to the technical arrangements, so as to exclude from protection the unprotectable features and the various permissible views, for the purpose of the widest protection, to the prosecution of the application – examination and publication – up to the registration stage, and the reply to any objections or ex officio findings.

We deal with the extension of protection of our clients’ designs throughout the European Union by means of the Registered Community Design system, International Design registrations, or foreign National registrations, in accordance with laws, regulations and international treaties.

We define with the client the strategy for the watching of third-party designs, including those filed by competitors, on the Official Registers, on the web, and in the marketplace, to protect our clients’ exclusive rights in the field of aesthetic innovation.

• We support our clients in due diligence, valuation, and economic valorisation of their designs, in collaboration with trusted outside attorneys and other experienced professionals in the field.
• We take care of the drafting of all types of contracts related to our clients’ intellectual property rights, in consultation with trusted outside attorneys.
• We assist our clients in enforcing their designs in active invalidation proceedings or infringement actions to be brought against third-party designs interfering with the scope of protection of our clients’ rights.
• We support our clients in the administrative, civil, criminal extrajudicial, and judicial defence of their design rights, in collaboration with trusted outside attorneys.