Italy: Legal Protection of Designs

Last Updated: 5 November 2002
Article by Paola Sangiovanni

The legal protection granted to designs in Italy and at the Community level is changing rapidly and affords new, simple and inexpensive ways to ensure protection of important assets. While businesses are spending increasing amounts of money to make products appealing to their customers, it is important to be aware of which legal tools may be used to protect such investments.

This article briefly illustrates the legal protection of designs, which may be obtained through registration at the Italian level. Further, registration of a design may also be obtained for multiple jurisdictions by means of an international registration pursuant to The Hague Agreement. Lastly, a unified protection throughout Europe is afforded by the Community design.



Italian legislation has provided protection to industrial models since 1940 in two categories: (i) utility models enhancing the efficacy or convenience of machinery or its parts, as well as (ii) ornamental designs and models.

In 1998, the European Directive 87/71/EC on the legal protection of designs was enacted to the end of approximating the design protection laws of the Member States. Italy executed the Directive by amending its national laws on designs1, while leaving untouched its regulations on the patents of utility designs.


Following the European Directive, Italian law defined "design" as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation.

A registerable design may consist of a component of a complex product, provided it is visible during normal use of the product and it has all requirements necessary for its protection.


The design may be protected by registration if it is (a) new and (b) has an individual character. The requirement of novelty is found if no identical design has been made available to the public before the date of filing of registration or the date of priority. The design has an individual character if the overall impression it produces on an informed user differs from the overall impression produced on such user by any design which has been made available to the public before the date of filing or the date of priority. The degree of freedom of the designer in developing the design is taken into account to assess the requirement of individual character. Further, the design must not be dictated by the object’s technical function.

In order to allow designers to test their products before deciding if it is worth registering their designs, the design is not considered disclosed to the public if it is made available to the public by the designer during the 12-month period preceding the filing date of the application or the date of priority. For example, designers may present their creations at trade exhibitions or fashion shows, and subsequently decide within a year which designs to register.

The law provides that one application for registration may cover up to 100 designs, provided that they relate to products falling within the same international class. This serves the interest of industries that produce large numbers of designs having a short market life where the formalities of registration must be reduced to a minimum.


The registration of a design confers to the design-holder the exclusive right to use it and to prevent any third party from using it without its consent. The registration of the design elapses after 5 years from the filing, but the design holder may obtain 5-year extensions up to a period of 25 years. The duration of the utility model, however, remains 10 years.


Rights conferred upon registration cannot be exercised in respect of:

(a) Acts done privately and for non-commercial purposes;

(b) Acts done for experimental purposes;

(c) Acts of reproduction for purposes of making citations or teaching, provided that the source is mentioned, the use complies with fair trade practice and does not unduly prejudice the normal exploitation of the design.

The principle of exhaustion of rights applies to design rights as well. In other words, the above described rights conferred by the registration of a design become exhausted when the product has been put on the market in the Community by the holder of the design rights or with his/her consent.


The protection of a design is without prejudice to other forms of legal protection, such as copyright protection, trademark protection, patents, utility models, other distinctive signs and unfair competition.


Italian law protects designs if they are registered with the Italian Office of Patents and Trademarks (Ufficio Italiano Brevetti e Marchi). However, Italy is a party to The Hague Agreement Concerning the International Deposits of Industrial Designs of 1925, as subsequently amended. The Agreement is a treaty administered by the World Intellectual Property Organization (WIPO), which allows an applicant to file a single application either with the Italian Office of Patents and Trademarks or with WIPO directly and to obtain international registration of the design. The design will be protected in any of the countries indicated by the applicant and subject to the local national laws.


Council Regulation no. 6/2002 of December 12, 2001 on Community designs established a uniform protection of designs directly applicable in each Member State. Such Regulation has been implemented by means of a Commission Regulation and once the fees for registration have been established, the Office of Harmonisation in the Internal Market (Trade Marks and Designs), also known as "OHIM", will register Community designs.


Regulation 6/2002 provides protection both for registered and unregistered Community designs. The requirements and rights connected to the registered Community design are almost identical to those incorporated in the European Directive 87/71/EC and already described above. It is worth noting, however, that while filing the application, the applicant may request that publication be deferred for a period of 30 months.

However, designers need not register their creations to obtain legal protection. In fact, the Regulation provides for an unregistered Community design, which is a design, having the requirements of novelty and individual character, made available to the public. The term of protection for an unregistered design is three years from the date on which the design was first made available to the public within the Community. The holder of an unregistered Community design is entitled to prevent any third party from using the design, but only if the contested use results from copying the protected design. The protection of an unregistered Community design is therefore limited to forbidding the use of a copy of the design. It does not forbid an independent creation by a designer who does not have knowledge of the prior unregistered design.


Member States shall designate in their territories a limited number of national courts and tribunals of first and second instance (Community Design Courts), which shall have exclusive jurisdiction over infringement and validity of the Community designs.

Actions and claims of infringement and validity shall be brought:

(i) In the courts of the Member State in which the defendant has his seat, domicile or an establishment;

(ii) If the defendant does not have his seat, domicile or an establishment in any of the Member States, the proceedings shall be brought in the courts of the Member State in which the plaintiff has its domicile or establishment;

(iii) If neither the defendant nor the plaintiff is so domiciled or established, the proceedings shall be brought in the courts of Spain, where the OHIM has its seat.

In any of the above cases, the Community Design Courts shall have jurisdiction in respect to acts of infringement committed or threatened within the territory of any of the Member States. This provision greatly reduces the costs and burdens of the design right holder in need of protection against Community-wide infringement. Sanctions for infringement may include orders prohibiting infringement activities, orders of seizure of the infringing products or of the manufacturing materials, as well as any other appropriate sanctions. The Community Design Courts shall apply the Regulation and, on matters not covered, their national laws.

The validity of the Community design may be challenged before a competent Community Design Court or before the OHIM. The decisions issued by the OHIM may be appealed before the OHIM’s Board of Appeal and actions against decisions of the Board of Appeal may be brought before the Court of Justice.


In conclusions, designers are now entitled to protect their creations by means of:

  • Registration in Italy;
  • International registration; or
  • Registered or unregistered Community design.

In particular, the Community design is a new tool, which affords a single protection throughout the European Union, as well as jurisdictional advantages in the enforcement of such protection.

Royal Decree no. 1411 of August 25, 1940 was amended by means of Legislative Decree no. 95 on February 2, 2001 and subsequently by Legislative Decree no. 26 on February 2, 2002.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.