Protection of Graphical User Interfaces as Registered Design Rights or Design Patents in Italy

For filing a design application with the Italian Office for Patents and Trademarks (hereinafter the “Office”) the following official fees, which differ depending on the filing mode, apply:

• E-filing: €50 for a single design and €100 for multiple designs;
• Paper filing: €100 for a single design and €200 for multiple designs.

• The registration must be renewed on its fifth anniversary, for up to a maximum of 25 years.
• Fees:
  • Second five-year period: €30
  • Third five-year period: €50
  • Fourth five-year period: €70
  • Fifth five-year period: €80
  • Late payment (within six months of the due date): €100

Pursuant to the Prime Minister Decree no. 272/2010, assuming that no objections are raised by the Office, the procedure to grant should last no more than 180 days from the date of filing of the application. However, such a deadline is not mandatory, and the duration of the registration procedure may vary considerably depending on different factors, including the Office’s workload.

The self-disclosure period is equal to 12 months.

More specifically, pursuant to Article 34, paragraph 3, of the Italian Industrial Property Code (the "Code"), a design that has been disclosed by the author, their successor in title, or by any third party as a result of information or actions originating from the author or their successor in title, within the 12 months preceding the filing date of the application for registration—or, where priority is claimed, within the 12 months preceding the priority date—shall not be regarded as having been made available to the public.

Up to 30 months. More precisely, pursuant to Article 38, paragraph 5, of the Code, the Office makes the application for registration available to the public with the graphic reproductions or samples and any descriptions after filing, provided that the applicant has not excluded accessibility in the application for a period which cannot be more than 30 months from the filing date or the priority date.

Yes, if the design owner has appointed an attorney, the latter must be provided with a POA. The POA must be signed by both the applicant and the attorney.

Pursuant to Article 169, paragraph 5 bis, of the Code, the priority claim that was not presented at the time of submission of the design application can be submitted within the subsequent deadline of 1 month from the date of submission. Furthermore, pursuant to Article 169, paragraph 6, of the Code, within 6 months from the filing of the application, the applicant shall submit to the Office the priority documents or, alternatively, the WIPO DAS code. In both cases, the Italian translation of the priority documents shall be filed too.

The examination of design applications involves both an admissibility check and an assessment on the merit.

The admissibility check serves to ascertain that the application for registration has been completed in its essential elements and that the filing fees have been paid. An application is considered not complete if it lacks the indication of (i) the applicant; (ii) the applicant’s elective domicile; and (iii) the design in the form of a title and possibly the indications of the characteristics of the products to be claimed.

The assessment on the merit is aimed at verifying that the design whose registration is requested falls within the definition of design given by Article 31 of the Code and that is not unlawful pursuant to Article 33 bis of the Code. Pursuant to Article 33 bis, a design cannot be registered if it is contrary to public order or morality or constitutes an improper use of one of the elements listed in Article 6

ter of the Paris Convention for the Protection of Industrial Property, or of signs, emblems and coats of arms other than those contemplated by the said Article and which are of particular public interest in the State.

Within the assessment on the merits, the Office also checks if the images presented are clear and suitable for understanding the limits of protection.

If the application has criticalities, the Office sends an official communication containing any relevant objection to the applicant at the elective domicile indicated in the application, granting a deadline to reply. If there is no reply or if the reply does not allow the objection to be resolved, the Office rejects the application. Instead, applications that have not been subject to objections, and those for which objections have been resolved, are granted.

No, the Office does not carry out any prior art searches.

The exam of priority claims by the Office is limited to formal requirements.

Differences between designs are considered irrelevant if – based on a case-by-case assessment – they are considered not material.

No, under Italian law it is not possible to oppose design applications prior to grant. The only possibility to challenge a design is through an invalidity action to be started, after the registration, before the competent Court.

The design application must contain at least one representation. No maximum number of representations is provided.

Regarding the graphic representation of designs, as of 15 May 2018, the Office's practice is based on the Common Communication issued by the EUIPO on 15 May 2018. Based on such Communication, a sequence of static views can be used within a single application to show an animated design. However, to be accepted, the sequence’s views must be visually connected, meaning that they must share common features. Furthermore, the applicant must number the views in a way that clearly illustrates the movement or progression.

Under Italian law, to define the design scope of protection, reference must be made to the design representations attached to the application.

In addition, pursuant to Article 167 of the Code, the application may contain the indication of the characteristics of the products that are intended to be claimed. Furthermore, pursuant to the same Article 167, the description of the design must be added to the application, if necessary for the understanding of the design itself.

Based on the indications provided by the Office, such a description, whose scope is providing a verbal explanation aimed at clarifying the design, shall: (i) refer to the design and not to the product to which the design applies; (ii) be accurate and suitable to show the difference between the design filed and any pre-existing designs; (iii) cover all aesthetic features of the design, emphasizing its most distinctive aspects.

As specified by Article 25 of the Ministerial Decree no. 33/2010 (containing the Code’s implementation rules) the description, if submitted, may conclude with one or more claims indicating the essential and new parts of the design and stating, specifically, what is intended to be the subject of registration.

Instead, no specific indication is given by law or by the Office regarding written disclaimers aimed at limiting the design scope of protection.

Based on the Italian law and practice, the following main rules apply:

• The design must be represented in a clear and complete way;
• Images must be clear, sharp and uncluttered;
• If the colour or colours of the design are features for which registration is sought, the design representation must be made in the colour or colours claimed;
• The graphic representation of the design may also be achieved by means of photography, printing, or images produced with digital tools;
• The image must contain only the design and must be on a white background;
• Multiple views of the same design may be submitted (useful in the case of a three-dimensional product), each on a separate sheet;
• Technical drawings, explanatory texts, inscriptions or symbols cannot be included in the representation;
• Visual disclaimers (i) must be represented through broken lines, colour shading, boundaries and blurring and (ii) must be consistent across all the views;
• Exploded views must be combined with at least one view representing the product assembled;
• Magnified views must be presented in a separate single view and are acceptable if the magnified part is already visible in one of the other submitted views;
• In case of products consisting of several parts, at least one view must present the whole product.

GUIs or GUIs single elements (such as icons or logos) are also eligible for copyright protection, if they meet the requirement of originality. Furthermore, it is also possible to protect GUIs by registering their elements, such as the screen display, icons, brands or logos, as trademarks.

The protection of GUIs or GUIs single elements under copyright law or their protection as trademarks cumulates with the protection as designs.

However, while the design protection lasts for a maximum period of 25 years, the copyright protection lasts for the entire life of the author plus 70 years after his/her death. Furthermore, if GUIs components, such as icons, brands or logos, are registered as trademarks, they can benefit from potentially indefinite protection, if the trademarks are timely renewed.

The most relevant challenge is to present drawings and descriptions as accurately as possible, to correctly identify the scope of protection. Therefore, it is crucial to file design applications with the assistance of an expert professional.

We recommend that the design applications strictly comply with the indications contained both in the legal rules, and in the Common Communication issued by the EUIPO on 15 May 2018 on which the Office action is also based.

The international registration of designs allows to simultaneously obtain protection in several countries through a single filing at WIPO, provided the designated countries have signed the 1960 Hague Agreement, and has the same effects as a registration made directly in those countries. However, considering that each country reserves the right to carry out the examination and possibly refuse protection if the requirements provided for by national legislation are not met, we have no specific points to consider in addition to those already addressed.

No, except for the EU Directive 23/10/2024 n. 2024/2823 which shall be implemented by the Member States by 2027.