In order to meet the need to be recognized in the marketplace, the firm can rely on the trademark. In order to distinguish its products, it can use the tool of design (or ornamental model), which is intended to protect the aesthetics, shape and more generally any peculiar aspect of a product that is perceivable from the outside.
The registration of a design protects the appearance of a product or of a part of it which results, in particular, from the characteristics of the lines, contours, colors, shape, surface texture or materials of the product itself, or from its ornamentation, provided that they are new and have individual character. Specifically, a model must be new compared to other previously disclosed designs, and must have individual character, i.e. generate in the observer a general impression different from that created by previous designs.
Design protection can be obtained through one or more direct national filings, through a regional filing (for Community Design in the EU) or through a supranational filing procedure (International Design).
For example, the procedure for registering a Community Design allows protection by filing a single application for the entire territory of the European Union. The advantages of this tool are clear for all to see: the filing of a single application allows costs to be reduced to a minimum and protects a vast market, which today includes more than 500 million consumers. Also in this case, the competent office (EUIPO, the European Union Intellectual Property Office) checks the formal requirements of the application for registration and grants the application very quickly (a few days after filing). In the territory of the EU it is possible to decide to exploit, under certain conditions, the protection granted to the unregistered design, which operates from the date of disclosure to the public for a limited period of time (3 years).
A registered design in the EU (as in Italy) has a duration of 5 years from the date of submission of the application, renewable for periods of 5 years, up to a maximum of 25 years, but unfortunately the rule is not so generous everywhere: the duration for the United States is 15 years from the granting (which is reached after an examination of merit) and in China is only 10 years from the filing.
Design is an instrument that is only apparently simple to manage; its many facets and the still uneven legislation of the various countries require, in fact, careful procedural, strategic and substantive evaluations. For example, a previously disclosed design can only be registered in certain countries, such as those of the European Union and the USA, while this is impossible in China. Protecting a detail, or a part, may be easier in some countries, while in others it can only be done for the entire product. Again, protecting entire collections is possible, even at low cost, only where the so-called "multiple model" exists, which allows articles of the same classification (called "of Locarno") to be grouped together in a single file.
The rapid granting of an exclusive right (at least in the EU) and the advanced image search technologies based on artificial intelligence tools - which allow one to track down unauthorized users of one's design on the web - strengthen the effective protection of design rights.
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Edgardo Deambrogi - Partner - European Patent Attorney - edeambrogi[at]jacobacci.com
Valerio Verdecchia - Patent Engineer - vverdecchia[at]jacobacci.com