Design is the legal instrument used to protect the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. As other IP rights, design is a corporate asset entailing a better recognition in the market as well as an increased asset value. Design IP right allows to Its owner to access to public founding.

Product means any industrial or handicraft item, including, inter alia, any components to be assembled to form a complex product, packaging, presentations, graphic symbols and typefaces, except for computer programs; a design may therefore be a two-dimensional (e.g. a patterned fabric) or three-dimensional (e.g. a chandelier) item.

Any design which is new and original (in the EU and Italian IP law, the latest requirement is indicated as "individual character") can be registered as a Design.

Like patents, the principle of absolute novelty also applies to design; therefore, without prejudice to the regulations providing the so-called "grace period", any disclosure potentially allowing third parties to become aware of the product thereof before the filling of the application, will invalidate such application.

EU®EKA provides assistance on industrial design matters, with specific regard to:

• Availability searches and Prior art searches
• Design filling application in Italy and worldwide
• Prosecution 
• Invalidity actions against third party design registrations
• Pro-veritate legal opinions on potential violation of one's IP rights and the IP rights of others, 

and free opinions on the marketing of a product with respect to the risk of infringement on third 

party IP rights.

• Surveillance services
• Recordals and administrative formalities in Italy and worldwide
• Economic assessment

One of the preconditions for free competition in the market is that consumers may be able to attribute pros and cons to the products and services offered by the companies. For this purpose, consumers must be enabled to "identify" the company from which a specific product or service come from, since this is the only way such consumers may buy it again, provided that they are satisfied thereof.

The trademark performs this task to identify, and it may be deemed as the "name" and "surname" of the product, making it identifiable and distinguishable from any competing products. 

Most IP laws allow different types of trademark such as:

-Words (having a real or fancy meaning) - e.g. "MULINO BIANCO", "ADIDAS"

-Numbers e.g. "3" of the HG3 corporation

- Letters (including acronyms) e.g. "G" for GUCCI, "CLA" for MERCEDES

-Drawings (with or without a semantic meaning) e.g. "CAVALLINO RAMPANTE" (prancing horse) for FERRARI

-Sounds - e.g. advertising jingles

-Shapes (of products and/or packaging) e.g. COCA COLA "glass bottle"

-Colours (or combinations) e.g. "Orange" for ING DIRECT

- Smells and perfumes - e.g. scent of green cut grass (for tennis balls). 

Trademark may be: (1) individual trademark, (2) collective trademark, and (3) certification trademark, depending on their specific function, and, like other IP rights, represent corporate assets granting a higher goodwill in the market as well as an increased asset value. Trademark IP right allows to Its owner to access to public founding.

Most of national and international laws on trademarks (including Italian IP law) provide for a "validation/indisputable system”. If the owner of an earlier trademark does not react within 5 years to the registration of a subsequent trademark, identical or similar to its own, any legal remedy will be precluded and the subsequent trademark become definitively indisputable. 

For these reasons, and to ensure an actual protection of trademark, it is necessary to activate a surveillance service, in order to quickly report any subsequent filing of identical or similar trademarks, in the interested geographic areas.

EU®EKA provides support on trademark matters, with specific regard to:

• Availability searches in Italy and worldwide
• Trademark filing applications in Italy and worldwide 
• Prosecution 
• Oppositions and invalidity actions against trademark applications and/or registrations
• Pro-veritate opinions on potential interference of one's IP rights and the IP rights of others,  and free opinions on the marketing of a product with respect to the risk of infringement on third party IP rights.

• Recordals and administrative formalities in Italy and worldwide
• Economic assessment
• Surveillance service

The domain name is the address of a website in alphabetical format, designed to be more easily remembered than the actual IP address of the website itself, which is expressed in numerical form.

The internet address consists of two parts: the top-level domain and the second-level domain.

The Top Lever Domain (TLD) is the last part of the internet domain name, namely the acronym that follows the rightmost point of the URL, e.g. .it, .eu, .us, .org, .net, .com, etc.

TLD has a descriptive function since it indicates the territory in which the owner works (geographic TLD e.g., .it) or the nature of the entity and/or the products/services provided (generic TLD e.g., .gov, .edu, .org, .com).

The core of the domain name is the Second Level Domain, which is the part that characterizes and distinguishes the domain itself.

Since the domain registration system is based on the " first come, first served " principle, problems may arise when registering a domain name that match with a trademark owned by a third party.

The unlawful registration (cybersquatting or domain grabbing) of domain names corresponding to other entities’ trademarks (especially, but not solely, well-known trademarks), in order to resell them later to those interested thereto at a price much higher than the amount paid for the relevant registration, is a very topical issue.

Any breach of the rights relating to a specific domain name, or any usurpation thereof, can be remedied by either proper legal proceedings before a Court or arbitration procedures set forth for by the most of IP laws.

EU®EKA provides assistance also on domain name matters, with specific regard to:

• Domain name registration in Italy and worldwide
• Assistance in arbitration proceedings before WIPO and any domain registration authorities
• Pro-veritate opinions on violation IP rights concerning internet domains
• Surveillance services

If a company intend to develop and propose a certain product to the market, an availability and prior art searches allow a first screening of the state of the art in order to avoid infringements of third parties’ IP rights, and in case of filling of a patent or design, to verify if your invention or your new product to be protect differs from any other technical solutions already know or other products existing in the market. 

These type of researches are not market researches, since the review is carried out on IP databases relating to filed (and published) and granted patents, designs and trademark; therefore, it is not possible to find e.g. any “non registered” trademarks or designs or products in the market which have technical or aesthetic features which have not been claimed by proper IP right applications.

With regard to trademarks, availability searches allowing to identify earlier applications or registrations that are identical or similar to the trademark that you intend to protect.

Research plays an important role in IP litigation, e.g. in order to verify the validity of a third party’s IP right that is assumed to be infringed.

Among the different types of searches that can be carried out, very common and generally performed are those based on “ownership query” that allow to check the IP portfolio owned by a specific entity (e.g. a competitor), as well as those to check the legal status of patents, design and trademark that allow to identify, inter alia, the ownership of an IP right, the existence of assignment or licenses registered thereon, the States/territories protected by the IP right, etc.

EU®EKA provides all availability and prior art research services on IP matter.

During the life cycle of an IP right, it or its holder’s legal status may be affected by certain changing, including, but not limited to, the transfer of ownership of such IP right, a seizure that has to be recorded, or transfer of seat  of the holder, or any other personal data changes.

All these changes should be promptly notified to the referenced Patent and Trademark Offices so that the IP right status in the relevant register may be updated.

In order to maintain any patents and designs, certain official fees are to be paid within specific deadlines, just as trademarks are to be renewed every 10 years. Failure to pay such fees causes the forfeiture of the IP rights.

EU®EKA offers services that comprises all administrative formalities implying registrations or annotations, as well as the maintenance of IP rights portfolio, which for the holders/clients of a relevant portfolio may be managed by personal renewal/maintenance "package" in order to simplify the administrative management by the same holder/client.

In Italy, any disputes regarding IP rights, copyrights and most cases of unfair competition are subject to the jurisdiction of specialized Courts, called “enterprise specialized section”

Such specialized sections are not present in all the Italian Courts; as a matter of fact, the Italian territory has been divided into districts, and currently such sections are established at the Courts of Bari, Bologna, Catania, Florence, Genoa, Milan, Naples, Palermo, Rome, Turin, Trieste, and Venice, and then also L'Aquila, Ancona, Catanzaro, Campobasso, Cagliari, Perugia, Potenza, Trento, Bolzano, and Brescia. 

The advantage of such specialized IP Courts is that the judges have a specific training to manage the proceedings in IP matters, and that provisional and ordinary proceedings are faster than the proceedings regarding different matters.

EU®EKA offers support for litigation by providing:

• Legal assistance in litigation
• Legal and technical support in arbitration proceedings and in description and arbitration procedures provided by the regulations of trade fair organizations

• Collaboration with other law firms not specialized in IP matter, by providing technical-legal support in IP cases;

• Technical/legal consultancy to study the case, and drafting legal opinions and technical briefs for 

any proceedings relating IP rights

If you may need to bring a legal action or to defend against a legal dispute brought by third parties outside ITALY, EU®EKA provides the support of its IP network of professionals to guarantee the right to start an action or the right to defend.

In a rapidly changing society, it is essential to invest in training and professional updating to keep up with the continuing technological, digital and organizational developments that impact on work and on the way of doing business.

On request EU®EKA organizes for companies and for private and public entities, training events aimed at providing initial guidance on IP for employees and company’s staff, in order to provide the basic and guidelines on IP matters. 

Since IP is a highly internationalized field, EU®EKA also provides translation services for patent texts, legal texts and legal agreement, as well as services for authentication before notary public and legalization of documents.

The intangible assets of a company are represented by its patents, designs, trademarks, software and know-how, which assume an ever-increasing importance in the overall assets of such company.

More frequently companies need to assign an economic value to patent or trademark, not only in case of assignment of any IP right: a due diligence may be required also in the event of the sale of company or of a branch of it, or in case such company needs to obtain loans (e.g. lease-back transactions) or investments by third parties (venture capital; investment funds; crowdfunding; etc.).

EU®EKA provides advice and support in this matter by supporting the professionals of own network or those indicated by the client in the legal and economic assessment of an IP right or of IP portfolio.

A company is often in a position of objective uncertainty about whether it may be able to freely put on the market a certain product, or whether such product may infringe any third parties’ IP rights, as well as on the validity of own IP right or on competitor’s IP right, which may affect its business activities.

EU®EKA provides support to inventors, designers, creators of works and companies by providing the following services:

• Legal opinions regarding the validity of a patent, utility model, trademark or design
• Legal opinions on possible falling of a product within the scope of protection of one or more patents, patent applications or designs of the client’s competitors

• Legal opinions on the risk that a trademark may be confused with other trademarks or similar rights

• Legal opinions on the copyright infringement of a work created by third parties