What is the legal definition of a registrable design?
The legislation provides that the appearance of the entire product or a part of it can be protected as a design, as it results, from the characteristics of the lines, contours, colours, shape, surface structure, materials of the product itself, its ornament, provided that they are new and have individual character.
To make the idea of the product better, it can be said that it can be both an industrial and artisanal object; but also its packaging, the presentation of the same on internet pages, the graphic symbols used to scroll through the images online, the menus of web applications and selection icons, simple typefaces (fonts) and drawings made in CAD.®
Therefore, having a product with certain appearance characteristics, represents the first step towards an added value to be protected.
So, if you have verified that this added value exists, you just have to make sure that the characteristics meet legal requirements such as novelty and individual character.
Novelty means the fact that the design must not have been disclosed before a certain date.
I tell you this because, I happened to intervene on situations of disclosure that the owner of a design had hidden from me and that for this reason, was the subject of dispute: in the present case it was a disclosure made by him on his own website which he had then replaced. In another case, the “pre-disclosure” took place by means of a sale announcement on Amazon.
In this case, the potential registration of design would be void by law and therefore cancelable at the request of anyone. There are countries, such as Italy, that provide a grace period for disclosures made by the same holder, while other countries in the world do not allow pre-disclosure in the most absolute way.
If you have a design and you want to know if you have the novelty requirements,
Few people know that under certain conditions, design protection can be achieved even in the absence of registration. This can benefit products that are greatly affected by the fashion factor, such as seasonal clothing collections.
Therefore, a design is new if no identical design has been made available to the public before the date of filing of the application for registration, if registered; or from the date of first disclosure the absence of registration.
When are two models considered identical?
When they differ only in irrelevant details or changes, which go unnoticed by the perception of the consumer, for example those made necessary by the need for technical adaptation of the design to the product.
Specifically, what is meant by disclosure?
Disclosure is the accessibility to the public of the design through the presentation of the product or design at a fair, at an exhibition, in a competition, the publication of the product or design in a catalogue, in specialized magazines, the public offer to potential manufacturers or retailers, the presentation and dissemination of the product or design in the context of a television broadcast or as it is Said before, through the internet.
In this regard, if you find yourself in the situation of blocking an advertisement of product sale on the internet for the presence of another protected design, and you want to know if this is devoid of novelty,
In addition, for the access to protection of a design, beyond novelty, your company asset must also have the requirement of individual character: that is the characteristic or characteristics concerning the outer appearance of the product, suitable to leap out and draw the attention – not of any user – but only of the “informed” one.
… The user who, without being an expert, knows the various designs existing in the reference sector and, because of his interest in the products in question, demonstrates a relatively high degree of attention when using them.
Sometimes the different sensitivity found in the informed user can make the difference on the final outcome of a design counterfeit lawsuit.
For example, in the comparison between two car models, a real one and a toy, the informed user, as “judges” have said many times, has a different sensibility: in the case of toy cars, he/she gives less attention to particulars, consequently it is less easy to encounter some differences of design in relation with real cars.
This means that the designer in the field of toy cars has to resort more to creativity to create new toy models.
Therefore, if you have a case of ongoing design infringement or simply want to know who the informed user in your specific product sector is,
Moreover, in ascertaining the individual character, account is also taken of the author’s margin of freedom in creating the design, compared to the crowding of the market and the reference market.
For example, in the tyre sector, the crowding of models and manufacturers, as well as the technical limitations in creating wheels with different shapes and sizes from those which We know, implies that the addition of small details can be considered suitable to identify and differentiate the product in terms of novelty and individual character.
Even the design, applied or incorporated to a complex product, if this component remains visible to the final consumer during normal use and the characteristics of the component possess on their own the requirements of novelty and individuality, they is worthy of protection.
The most fitting examples are those given by the shells of mobile phones with respect to its contents, the rims of the bicycle with respect to the same, as well as the steering wheel and rear-view mirrors in the case of a vehicle.
If you want to understand how to answer or what to write in a warning, or you want to be sure you can ask for the cancellation of a design of a competitor, ask us what to do by
