ITALY Law and Practice Contributed by: Monica Riva, Alessandra Ottolini, Francesco Chierichetti and Giulia Ghidini, Legance
as, mediation or administrative procedures before AGCOM may also be available.
tion, as are features that must be reproduced in their exact form and dimensions to allow mechanical con- nection with another product. Italian law does not provide a separate national unreg- istered design right. However, unregistered Communi- ty design protection is available at EU level for designs made available to the public in the EU, subject to the conditions set out in EU design law. Product appear- ance may also be protected through trade marks, copyright or unfair competition where the relevant requirements are satisfied. 4.3 Registration and Term Design applications are filed with UIBM, electronical- ly, through Chambers of Commerce or by post. The application must identify the applicant, indicate the product to which the design is applied or incorporat- ed, classify the product under the Locarno Classifica- tion and include clear graphical representations, such as drawings, photographs or digital images. Multiple designs may be included in one application where the conditions for multiple filing are met. The application is normally made publicly available on filing, although deferred publication may be requested for up to 30 months. UIBM carries out an examination mainly on formal and absolute grounds. If objections are raised, the applicant may respond; if the objec- tions are overcome, the design proceeds to registra- tion. Design filing costs are generally moderate for simple applications, but they vary depending on the number of designs, the filing route and professional assis- tance. Protection lasts five years from the filing date and may be renewed for four further five-year periods, up to a maximum of 25 years. 4.4 Enforcement and Remedies Design infringement occurs where a third party, with- out consent, makes, offers, places on the market, imports, exports, uses or stocks a product incorporat- ing the protected design, where the product does not produce a different overall impression on the informed user.
4. Industrial Designs and Trade Dress 4.1 Legal Framework and Protectable Subject Matter Industrial designs are governed by Articles 31–44 of the IP Code and by EU design law. Utility models are governed by Articles 82–86 of the IP Code. General unfair competition rules may also be relevant where product appearance is imitated in a misleading or unfair manner. A design protects the appearance of the whole or part of a product resulting from features such as lines, contours, colours, shape, texture, materials or orna- mentation. Products include industrial or handicraft items, components of complex products, packaging, get-up, graphic symbols and typefaces, but not com- puter programs. Design protection may cover two-dimensional ele- ments, three-dimensional shapes or combinations of both. Italy does not recognise trade dress as a separate autonomous right. However, the overall appearance of a product or packaging may be protected through registered designs, unregistered Community designs, three-dimensional or other trade marks, copyright and unfair competition, depending on the circumstances and the requirements met. 4.2 Requirements for Protection A registered design must be new and have individual character. Novelty means that no identical design has previously been disclosed, with designs differing only in immaterial details being treated as identical. Indi- vidual character means that the design produces on the informed user a different overall impression from earlier designs, taking into account the designer’s degree of freedom. The design must also be lawful and not contrary to public order or morality. Features dictated solely by technical function are excluded from design protec-
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