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1. Registration requirements In order to receive a design registration in Malaysia, the design must...
Registration requirements
Novelty and originality: To be registered in Italy, a design must be new and have an individual character. Novelty means that no design identical to the design has been available to the public before the application is filed. Uniqueness refers to the overall impression that a design gives to an ``informed user'' that is different from the impression of previously published designs. In short, it must have sufficiently different external features compared to existing designs.
Reasons for non-registration: Designs that do not meet the above requirements cannot be registered. Additionally, certain designs stipulated by law are not permitted to be registered. For example, shapes determined purely for functional purposes (where all the aesthetic features of the design are derived from the technical functionality of the product) or shapes that are joined to other products (so-called "match matches") are not protected. Furthermore, designs that violate public order and morals, designs that incorporate other people's works or trademarks without permission, and designs that include national or local government emblems or emblems will also be refused registration. It can be said that not falling under these exemption provisions is also part of the registration requirements.
Protected object
Definition of a design: The term "design" under Italian Design Law refers to the appearance of the whole or part of a product, which consists of visual features such as lines, contours, colors, shapes, textures, materials, and patterns. Visually recognizable designs, including product decorations, are subject to protection. "Products" here include not only industrial products but also handicraft products.
Protection of virtual designs: In Italy, designs can be protected even if they are notembodied in a physical object. For example, it is clearly stated that on-screen designs such as GUI (screen layout, icons, etc.) and animated images displayed on the screen of a computer or smartphone can also be registered as a design. This can be said to be an expansion of the scope of flexible protection in response to recent developments in the digital field.
Partial design: The design of a part of a product can also be protected as an independent design. For example, if a part of the product has a characteristic, such as the design of a car's taillight or the pocket part of a garment, you can file an application for only that part as a design. However, when registering a partial design for a part of a composite product, the part must be visible to consumers during normal use of the product, and the part itself must be novel and unique.
Specific example: The range of designs that can be registered is very wide and includes all types of product designs in 2D and 3D. Specific examples include packaging and container design, product display (trade dress) design, graphic symbols and typography, web screen and icon design, fabric patterns and sewing stitch designs, and partial designs such as clothing pockets. Marks that are used temporarily (for example, decorative logos for a limited time) may be protected as designs even if they cannot be registered as trademarks.
What is not protected: As mentioned above, designs cannot be registered for shapes that are determined only by technical function or shapes that are essential for combining with other products (for example, the connecting part of Lego blocks). In addition, the shapes of spare parts for composite products such as automobiles (parts used to restore the original appearance for repair purposes) are also excluded from protection in order to ensure competition in the replacement parts market. In addition, designs that violate public order and morals or harm the rights of others are also excluded.
Application procedure
Competent authority and language: Italian design applications are filed with theItalian Patent and Trademark Office (UIBM). Applications can be submitted online or on paper, and submissions through the Chamber of Commerce are also accepted. Application documents must be written in Italian. Even if the applicant is a foreign company or individual, the language of application is generally Italian.
Contents to include in the application: The application includes the applicant's information (name, address, etc.), design name and product name, and attachment of required documents. At a minimum, the filing date will be accepted if applicant information, a drawing (or photograph) of the design, and proof of payment of the prescribed fee are submitted. In addition, if you wish to claim priority under the Paris Convention, please state this fact and information on the earlier application, and submit a priority certificate within 6 months (if the certificate is in a foreign language, submit an Italian translation within 2 months).
Bulletin application for multiple designs: In Italy, it is possible to apply for up to 50 designs in one application. Furthermore, it is not necessary that all the designs belong to the same Locarno classification, and even designs in different product fields can be filed together (fees will be added for each additional design). This allows for flexible procedures, such as filing an application for a group of designs for a series of products that have a unified feel. However, it should be noted that when applying via an international design application (Hague), there are classification restrictions depending on the requirements of the designated country (described later).
Publication of applications and secret designs: Italy does not have an early publication system like Japan. Design applications are usually publishedonce registration is complete. However, third parties can view your application between application and registration. Additionally, applicants can keep the contents of their design application private (secret design) for up to 30 months by making a request at the time of filing. This Publication Deferred System allows strategies such as keeping a design secret at the time of market launch and disclosing and protecting it later. Publication will be made when the postponement period has passed or if the applicant requests early publication.
Formal Examination and Registration: The filed design first undergoes Formal Examination by the Italian Patent and Trademark Office. In the formality examination, it is confirmed that the application requirements are met, the submitted drawings are compatible, the design meets the definition, and there are no violations of public order and morals. Examination on substantive requirements such as novelty and originality (novelty examination) will not be conducted. This is similar to the registered design system common in EU countries, and is done to speed up and simplify examinations. Therefore, for example, even if a similar design existed in the past, it may be registered without being pointed out at the examination stage by the Office (as described below, such a design may be invalidated by interested parties).
Registration/Issuance: Once the formality examination is met and the necessary fees have been paid, the Patent and Trademark Office will register the design and issue a certificate of registration. The period from application to registration is relatively quick, taking approximately several months. Furthermore, design rights (exclusive rights) are generated through registration and are published in the official gazette. However, under Italian law, it is understood that the applicant has the right to prevent unauthorized use of the design by others, even between application and registration, as long as the application is published and the design is available for viewing by third parties. In other words, unless it is a secret design, provisional protection beginswhen it is made public after the filing date.
Application fee: The application fee is divided into 50 euros for electronic applications and 100 euros for paper applications, with discounts available for online procedures (slightly higher if multiple designs are filed at once). There is no registration fee or first year fee, but a renewal fee will be charged when renewing the validity period from the 5th year onwards (described below).
Representative and local address: If the applicant does not have a domicile in Italy or the EEA (European Economic Area), it is practically mandatory to proceed through a local representative. The agent must be an Italian industrial property consultant (patent attorney) or lawyer with the required qualifications. If a Japanese company applies directly, it will normally request an Italian agent to proceed with the procedure (details on whether a power of attorney is required will be discussed later).
Oppositions: There is no opposition system for design registrations in Italy. Therefore, if a third party wishes to invalidate the design after it has been registered, it is necessary tofile an invalidation action (cancellation action) in court as described below.
Exception for loss of novelty (grace period)
Italy also has exceptions to the loss of novelty of designs (grace period). Even if the creator of a design (or his/her successor) publishes his or her design before the application is filed, the design will not be considered novel if the design is filed within 12 months of the publication date. For example, even if you present your design at an international trade fair or exhibition, it will not be rejected for self-publication within one year. This is a common treatment in the European Union's design system, and has a similar period to Japan's loss of novelty exception (six months *extended to one year under Japanese law in 2020).
The grace period applies to thepublications by the authors or their successors, or publications resulting from misconduct (abuse) against the creators. The latter includes cases where the design is plagiarized or disclosed to a third party without permission. In these cases, an exception to the lack of novelty can be granted if the application is filed within 12 months of publication.
In addition, it is stipulated that ``publication in a form that is not normally available to the professional community or interested parties'' does not affect novelty. For example, it is stipulated that if a product is announced to a very limited extent and is not recognized in the market, it is not strictly considered to be publicly known. However, in practical terms, it is safest to file an application as soon as possible after the design has been published.
*In Italy, there are no clear procedural rules regarding whether it is necessary to declare this in the application or submit evidence in order to apply for the grace period. However, in the event of a dispute at a later date, it is recommended that you prepare documents that can prove the publication date and manner of publication (for example, an official exhibition catalog or exhibition certificate).
Reduction system
Fees reduction/exemption: The Italian design system does not provide any special reduction or exemption measures for government fees for small businesses, universities, etc. All applicants must pay the same fee. However, as mentioned above, there is a preferential treatment where the application fee is halved only for electronic applications. Additionally, filing multiple designs at once has the advantage of being cheaper than filing individually.
*In the past, there was a policy to temporarily waive fees for patents and designs (in 2006), and measures were taken to reinstate the fees the following year and change the system, but currently the fee structure has returned to the normal fee structure.
Necessity and format of power of attorney
Requirement of a representative: As mentioned above, when companies and individuals outside the EEA apply directly to Italy, they usually appoint a local representative. When requesting an agent to handle application procedures, a Power of Attorney from the applicant to the agent is required. In Italy, if you are filing through an agent, you are required to submit a power of attorney, which can be submitted at the same time as the application or at the latest within two months of the application.
Format of Power of Attorney: There is no particular standard format for a power of attorney in Italy, but it is prepared by an agent (patent attorney, etc.) and signed by the applicant. No notary or consular authentication is required; just a signature is valid. If you apply electronically, you will need to submit it as a scanned PDF file. Please note that some countries may require the submission of an original for each application, but in Italy, once a signed power of attorney has been submitted, no additional submission is required in principle (copies may be sufficient for subsequent proceedings by the same agent).
Language and contents: A power of attorney is usually prepared in Italian, but even if the applicant is a Japanese company, there is no problem as the agent will provide a format in English as well. The information to be entered includes the name and address of the applicant/agent, the fact that the applicant is entrusting the procedure to the agent, and the scope of authority regarding the design application. The signature must be signed by an authorized person such as a representative of the applicant company. A company seal is not required.
Drawing requirements (visual representation)
Submitting drawings (visual representations of the design): Design applications must be accompanied by drawings or photographs showing the design for which protection is sought. In Italy, **image data showing the external appearance of the product (JPEG format, etc.)** is attached to the application. This image will be published as is in the registration gazette and will form the basis of the scope of rights. Therefore, the drawings and photographs submitted must clearly express the features of the design.
Types of drawings and number of points: If it is a three-dimensional design, it is usually recommended to submit six views (front, back, left and right sides, top, and bottom). This allows you to reveal the design from all directions. If necessary, we may add perspective views, enlarged views, cross-sectional views, etc. to emphasize distinctive parts. On the other hand, in the case of flat designs (patterns, screen designs, etc.), one main drawing may be sufficient, but it is also possible to supplement them with drawings showing variations and usage conditions.
Points to keep in mind when creating drawings: Although there are no detailed format standards for design drawings in Italy, the following points should generally be kept in mind. (1) The image must not include the background or unnecessary objects and the shape of the design can be clearly distinguished; (2) Photographs or line drawings may be submitted, but for consistency, the format must be unified within the same application; (3) If you wish to protect colors, submit as a color image (if submitted as a black and white image, the color may not be included in the scope of copyright); (4) In the case of a partial design, a method is used to indicate that it is a non-targeted part by drawing the part for which protection is not sought with dotted or dashed lines or not drawing that part and leaving it as a blank space (this is a similar idea to Japanese partial design drawings). These efforts allow us to accurately express the scope of rights.
Brief explanation: In Italy, when filing a design application, there is an item to attach a **brief explanation of the design (brief description)**. This is a written explanation of the features of the design, but submission is optional. By adding an explanation, you can supplement the features of the design that are difficult to convey in the drawing, but even parts that are not mentioned in the explanation are included in the scope of the right if they appear in the drawing (the explanation is only an aid to interpretation). Therefore, in Japanese practice, the entire design is often expressed in drawings without any explanation, but we will respond appropriately after consulting with the Italian agent.
Protection period and renewal
Duration: The duration of a registered design right is 5 years from the filing date. This 5-year registration period can be renewed (extended) up to four times and can last for a maximum of 25 years. The design right is renewed every five years, and after 25 years, the design right expires and the design becomes public domain.
Renewal procedures and fees: To extend (renew) the term, you must pay a renewal fee by the specified deadline every five years. Renewal fees are set higher the later the period, for example, 30 euros for the second period (5th to 10th year from application), 50 euros for the 3rd period, 70 euros for the 4th period, and 80 euros for the 5th period (until the 25th year). Renewal fees must be paid in advance before the start of each term. If you do not pay by the deadline, you may be entitled to late payment relief by paying an additional fee (currently 100 euros) within 6 months.
Conditions for maintenance of rights: Italian design rights can be maintained for a maximum period by paying a renewal fee. There is no system for revocation of rights due to non-use (unlike trademarks, there is no obligation to use design rights). Therefore, once registered, the rights can last up to 25 years as long as they are renewed, regardless of whether or not they are used. However, if someone else continues to publicly use a design similar to your design, if you leave it unattended for a long time, you may be subject to restrictions on good faith when exercising your rights, so rights holders are encouraged to consider exercising their rights appropriately.
Infringement lawsuit (procedure and possible remedies)
Criteria for determining infringement: The determination of design right infringement in Italy is based on "whether the design of the accused product gives a different overall impression to the user receiving the information than the registered design." If they do not give a different impression (in other words, they are evaluated to be substantially the same), it is an infringement of design rights. This is almost synonymous with the concept of similar designs in Japan, but in Europe, the standard of ``informed user'' is used, and judgments are made based on the assumption that a hypothetical user has knowledge that is between a general consumer and an expert.
Jurisdiction: Design infringement lawsuits are under the jurisdiction of civil courts with specialized intellectual property divisions established in major cities. There are approximately 21 specialized intellectual property departments in Italy, and the court with jurisdiction is determined depending on the location of the plaintiff or defendant and the place of the infringement. Cases involving Japanese companies are often handled by courts in major cities such as Milan and Rome. The court is staffed with judges who are well versed in industrial property law and EU design regulations, and conducts highly specialized hearings.
Flow of litigation: When a rights holder discovers an infringement, it is common for them to first send a warning letter to the infringer and try to obtain an injunction or negotiate a voluntary injunction. If the matter is still not resolved, a civil lawsuit will be filed. In a lawsuit, we request an injunction (prohibition of sales, etc.) and/or compensation for damages. In Italian court practice, it is often the case that an interim injunction (interim relief) is filed at the same time as, or even before, a lawsuit is filed. Possible interim dispositions include preliminary injunctions (temporary injunction instructions), preservation of evidence (evidence gathering procedure called descrizione), and provisional seizures (temporary seizure of infringing goods)**.
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Preliminary Injunction: A temporary order issued by a court that immediately stops the defendant from manufacturing, selling, or advertising an infringing product. If necessary, we may also order the recall of distributed inventory products and promotional materials.
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Description of evidence (preservation of evidence): This is a procedure in which an enforcement officer, ordered by the court, on-site investigates the suspected infringing product or production site, and records and photographs the situation in detail. This includes securing accounting books and sales records, and gathering materials to be used as evidence in future legal proceedings. This system is similar to what is called a document submission order or evidence preservation in Japan.
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Preliminary seizure (seizure of products): If the evidence of infringement is clear, a provisional disposition may be made to seize the infringing products and related materials on the spot. Particularly at exhibition halls, infringing goods can be confiscated in the presence of police and the display can be immediately stopped.
These provisional dispositions are characterized by being secretly and quickly. Since the execution is carried out without prior notice to the other party, it is possible to prevent the destruction of evidence and the spread of damage. Courts often decide whether to issue a provisional disposition within one to two months on average from the filing of a petition, making it an effective means for early resolution for rights holders. In order for a provisional disposition to be granted, the right holder must demonstrate that the right is valid on the merits and that there is a high probability of success (fumus boni iuris), and that if left unaddressed, the right holder will suffer irreparable damage (periculum in mora). Once a provisional injunction is issued, the parties often engage in settlement negotiations, and the dispute may be resolved by the infringer making certain concessions to the right holder (such as removing the product or paying compensation for damages).
Principal action and relief: If the matter cannot be resolved with a provisional disposition, the case will proceed to regular court proceedings (suit on the merits). The defendant (the party suspected of infringing) can assert the invalidity of the design right as a defense. In Italy, there is no invalidation trial system at the Patent Office, so the validity of a design (novelty/uniqueness) must be fought in court. The court will investigate and refer to past designs as necessary to determine whether the registered design falls under any grounds for invalidation.
If the court ultimately determines that there is infringement and the design right is recognized as valid, the following remedies will be ordered:
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Injunction: Orders the defendant to permanently cease infringing activities (prohibition of manufacturing, sales, import/export, and advertising). If necessary, infringing products placed on the market will be ordered to be recalled or destroyed.
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Compensation for damages or return of profits: If the right holder has suffered damage due to infringement based on the defendant's willful negligence, damages will be awarded. Alternatively, this may take the form of ``restitution of unjust enrichment,'' in which the infringer transfers the amount of profits obtained from the infringing act to the right holder. As in Japan, the amount of compensation is calculated based on the right holder's lost profits, the infringer's profits, or the amount equivalent to royalties.
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Destruction and release of seizure of goods: The court may order thedestruction of infringing goods or manufacturing tools, or grant the rights holder the right to purchase them. We will also decide on formal disposition (confiscation, etc.) of the seized items.
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Publication of judgment: At the request of the right holder, the defendant can be ordered to publish the judgment in a newspaper, etc. This is a measure to deter infringement and restore social trust.
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Compensation for litigation costs: For the winning right holder, the defendant is ordered to pay certain litigation costs, including attorney's fees (in Italy, as a general rule, the losing party pays the costs).
The average trial period for a typical design infringement lawsuit in Italy is said to be approximately 3 years. However, as mentioned above, there are many cases in which issues are sorted out and resolved quickly through provisional dispositions, and in practice the strategy is to first secure provisional relief while preparing for a full-scale dispute.
Possible criminal penalties: It is worth noting that in Italy, serious infringements of design rights (particularly the deliberate production and sale of counterfeit products) can result incriminal penalties. Like trademark counterfeiting, design rights are protected under criminal law as industrial property rights, and intentional offenses are punishable by 6 months to 4 years' imprisonment and a fine of between 3,500 and 35,000 euros. The fact that there is a framework to prevent infringement from both civil and criminal perspectives is a major difference from Japan (in Japan, there are criminal penalties for infringement of design rights: up to 10 years in prison, etc.; however, actual application is rarer than for trademarks). We will discuss criminal proceedings in the next section.
Administrative investigation/customs injunction, etc.
Customs border measures: Italy has a Customs detention system for goods that infringe on intellectual property rights as a common system in the EU. A design right holder can apply to the customs authorities to have the import or export of goods suspected of infringing on the company's registered designdetained if the import or export is discovered. This system is operated based on EU regulations (currently EU Regulation No. 608/2013), and Italian customs is known within Europe for being very active and efficient in intercepting counterfeit products. Rights holders can increase the detection rate by providing customs with information on the characteristics of infringing goods and points for distinguishing them from genuine goods.
When customs finds cargo that is suspected of infringing on a design right, the cargo will be temporarily detained (detained) and the rights holder will be notified. The right holder determines within a certain period of time whether the goods infringe on his or her design rights, and if so, proceeds with procedures for confiscation and destruction. If the infringement is clear and the other party (cargo owner) agrees, a simple procedure for disposal without going to court is also possible. If not, the rights holder will need to file a civil lawsuit or criminal complaint to maintain the injunction. The advantage of a customs seizure is thatcounterfeit goods are contained before they reach themarket.
Administrative and criminal measures in the domestic market: In addition to customs, administrative and police agencies in Italy, including theFinancial Police (Guardia di Finanza), are focusing on detecting counterfeit products in the domestic market. If an intellectual property right holder files a complaint, the police may search the market or warehouse and seize the infringing product. In particularly serious cases, the matter may even be filed as a criminal case.
As mentioned above, there are criminal penalties for infringement of design rights, and there are cases where businesses that were actually selling large quantities of counterfeit products were caught and sentenced to jail time or large fines. The Italian Criminal Code has strict penalties (strengthened in the 2009 law amendment) for acts of infringement of trademarks, designs, and patents, and imposes severe penalties of up to six years in prison for organized counterfeiting businesses. On the other hand, if you are selling a small amount of illegally copied products, the punishment may be limited to **administrative penalties (fines)**, and the offense is handled according to the degree of maliciousness.
In addition to civil litigation remedies, intellectual property rights holders can also take advantage of administrative prosecution and criminal prosecution. However, criminal proceedings tend to be limited to cases of obvious piracy or counterfeiting, and the police may not be able to act on mere design similarities or imitations (so-called "loose copying"). As a rights holder, it would be a good idea to consider strategies from both civil and criminal perspectives, depending on the case. Overall, Italy is a country where the administration and judiciary work together to proactively eliminate products that infringe on intellectual property rights, which is a source of security for Japanese companies.
Relationship with international applications (Hague system, etc.)
International design application under the Hague Agreement: Since Italy is a party to the Hague Agreement (Geneva Act), and Japan is also a party to the same agreement, it is possible to obtain design protection in Italy using the Hague International Design System. If a Japanese company files an international application and selects "Italy" as the designated contracting party, a copy of the international registration will be sent to the Italian Patent and Trademark Office (UIBM) after international publication. Italy does not conduct a substantive examination, so if there are no problems with the formal requirements such as submitted drawings, protection can be granted without being notified of reasons for refusal in principle. In other words, you can obtain a design right through a Hague application with almost the same procedure and effect as a domestic application.
In the Hague application, it is possible to include multiple designs (up to 100 designs) in one application, but there is a requirement that they must be within the same Locarno classification. On the other hand, as mentioned above, Italian national applications can include up to 50 designs regardless of classification. Therefore, as a strategy for filing multiple designs, if you want to protect designs in different fields all at once, it may be advantageous to file directly in Italy. However, from the perspective of costs and examinations in each country when multiple designs are involved, in practice, applications are often filed separately for each similar product.
European Community Design System: In addition to filing an Italian international application, an important way to protect designs in Italy is to use theEU design system (Registered Community Design: RCD). Italy is a member of the EU, so if you register your design (RCD) with the European Union Intellectual Property Office (EUIPO) in Alicante, you will obtain a design right that is valid in all member states, including Italy. The protection requirements (novelty/uniqueness) for Community designs at EUIPO are the same as in Italy, and the duration is also the same: 5 years x 5 terms (25 years). Differences include the fact that designs that can be submitted in one application are limited tothe same category (for example, furniture designs and shoe designs must be filed separately), and the fee structure.
It is common for Italian companies and companies operating widely in Europe to obtain a Community Design at EUIPO from the beginning. On the other hand, if a Japanese company only does business in a specific country (for example, only Italy and Germany), it may be cheaper to file for each country individually. Using the Hague Agreement, it is possible to simultaneously designate Italy and the EU in one international application (if you designate the EU, you will get protection throughout the EU).
Unregistered Design System: The EU also has a system called Unregistered Community Design which does not require registration and protects designs against counterfeiting for three years from their first publication. If a design is published in Italy, it automatically becomes an unregistered design right throughout the EU, so it may be used for short-term products. However, the scope of unregistered design rights is limited, as they are only effective in the case of deliberate imitation, and the term is short at 3 years, so it is recommended that important designs secure 25 years of protection through registration.
From the above, in order to protect your design in Italy, you have the following options: (1) Obtain a registered design by filing directly in Italy, (2) Designating Italy in the Hague international application, and (3) Registering a Community design at EUIPO. It is a good idea to choose the route that best suits your company's needs, taking into consideration the breadth of protection, cost, and simplicity of procedures.
Comparison table of main points of Italian design system
Below is a table summarizing the main points of the Italian design system mentioned above.
| Item | Italian design system |
|---|---|
| Registration requirements | Novelty (something new worldwide) and uniqueness (overall impression different from existing designs) are required. There are reasons for non-registration (violation of public order and morals, purely functional shapes, joined parts, etc. cannot be registered). Novelty and originality are not examined in the substantive examination. |
| Protected object | Applicable to exterior design (in whole or in part) of the product. Regardless of whether it is 2D or 3D, intangible designs such as icons on the screen can also be protected. Partial design system available (parts that are visible during normal use are allowed). Shapes determined solely by function and spare parts are not protected. |
| Exception for loss of novelty | Grace period: 12 months. Applications filed within 12 months of publication or unauthorized publication by the creator, etc. are not considered to have lost novelty. Publications that are not normally available in the EU are also treated as exceptions. After the period has elapsed, even self-disclosure will be considered a reason for rejection. |
| Application procedure | The filing office is Italian Patent and Trademark Office (UIBM). Online application possible (fee discount available). The application form is in Italian. A single application can include up to 50 designs (regardless of Locarno classification). You can request a deferral of publication for up to 30 months at the time of filing. Registered in a few months with just formality examination. No objection system. |
| Drawing (representation of design) | Submit drawings or photographs at the time of application (JPEG, etc.). Six-sided drawings are recommended for three-dimensional objects. For partial designs, non-applicable parts can be indicated with broken lines, etc. Colors also available. Optional attachment of a brief explanation (supplementary explanation of the drawing). The submitted drawings determine the scope of rights. |
| Power of attorney | If applying through an agent, Power of Attorney is required. Valid with just a signature (no authentication required). Submissions can be made within 2 months after application. It is essentially mandatory for non-EEA applicants to appoint a local agent. |
| Fees reduction/exemption | No reduction/exemption system (No reduction or exemption of government fees for small businesses). Online application costs half the fee. Additional fees apply for each additional design. Maintenance pension is required every 5 years. |
| Duration/Update | Valid for 5 years from the date of registration (= date of application). Thereafter, it can be renewed every 5 years for a maximum of 25 years. The renewal fee increases gradually each term (e.g. 30€ for 2nd term → 80€ for 5th term). No extension possible after 25 years. |
| Measures against infringement | Civil litigation: Handled by a court with a specialized division. Claim for injunction, compensation for damages, etc. Provisional disposition system is well-developed (preliminary injunction, evidence collection, seizure of infringing goods). Average trial period is 3 years. Invalidation can be claimed in court (there is no invalidation trial). Remedies: permanent injunction, compensation, destruction of infringing goods, publication of judgment, etc. Criminal measures: Criminal penalties apply to malicious forgery (1-4 years' imprisonment + fine). Seizure and prosecution by police and prosecutors are also possible. |
| Administrative investigation (including customs) | Customs Detention: Based on EU regulations, counterfeit goods can be detained at customs. Imported goods are monitored and detained upon application by rights holders, and infringing goods are destroyed. Administrative enforcement: Domestically, financial police and others are cracking down on counterfeit products in the market. There are also examples of instant seizures at trade shows. Minor cases may result in administrative penalties, while serious cases may result in criminal prosecution and severe punishment (including imprisonment). |
| Relationship with international applications | Hague Agreement accession: Italy can be designated in international design applications (equivalent to domestic registration without substantive examination). EU Designs: Community designs registered at EUIPO cover the entire EU including Italy. Three-year protection under an unregistered Community design is also available. Depending on your needs, you can choose between direct filing, The Hague, and EUIPO. |
*The numbers in [ ] in the table indicate the source reference.
References/Sources
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【27】 Società Italiana Brevetti (SIB), “Protecting designs in Italy: filing and registration with the Italian Patent and Trademark Office” (2023) (Article explaining the design system by a major Italian patent office)
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[5][6] Japan Patent Office "Summary of Industrial Property Rights Systems in Each Country Italy" (2023 edition) (Japanese material that comprehensively explains the main points of the design system)
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【9】 IP Coster, “Industrial Design registration in Italy – IP Guide” (National design application guide by the international patent office network)
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【15】 页之码 (Yezhimaip) “What are the requirements for design application documents in Italy?” (Japanese version of Chinese site, QA on the number of drawings required for a design application, etc.)
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【20】 GLP Intellectual Property Office, “In brief: design enforcement in Italy” (Lexology, 1 Nov 2022) (Commentary on the practice of design enforcement in Italy)
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【23】 Cesare Galli, “Italy: Stronger enforcement dovetails with augmented border control and harsher punishments” (World Trademark Review, 29 Sep 2023) (Report on strengthened measures to control counterfeit products and criminal penalties)
Based on the information in the above documents, we have compiled an accurate summary of the Italian design system.
AUTHOR
Takefumi SUGIURA （杉浦 健文）
EVORIX Intellectual Property Law Firm Managing Patent Attorney
Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).