TRADEMARKS IN ITALY
Trademarks in Italy can be protected either by:
- National registrations;
- European Union Trademark Registrations;
- International Registrations designating Italy;
- National registrations in SAN MARINO.
It consists of any distinctive sign as words (including personal names), graphically represented signs, tridimensional colours or combination of colours, drawings, letters, figures and numerals, sounds and smells, shapes and packaging, provided that they are neither functional to the characterized goods, nor exclusively consisting of the shape resulting from the nature of the goods. Trademarks must not be descriptive of the characterized goods and services or deceptive.
A trademark is valid for 10 years from filing date and it confers exclusive rights to the use of the characterized goods and services. It can be indefinitely renewed for similar 10 year periods. No novelty examination is provided for and – after an official examination on absolute grounds – a trademark is published for opposition purposes. If no opposition is filed within the 3 month laid open period, the TM application is usually registered.
We strongly recommend to carry out a Preliminary or Clearance Search before filing a National Trademark Application and to establish a Watching Service thereafter, in order to immediately detect any subsequent confusingly similar trademark application and to enforce suitable defensive measures.
Priority must be claimed on filing, provided that the application in Italy is filed within the Convention term (6 months) according to Paris Convention or of WTO. A certified copy of the basic application must be filed, together with an Italian translation thereof.
Collective Trademarks are registrable, by legal entities or individuals, aimed to guarantee the quality, origin or nature of specific goods or services.
According to the Pact of Amity and Good Neighborhood between Italy and the Republic of San Marino of 31 March 1939, Trademark applications filed in San Marino, based on the domestic Law which came into force on 1999, extend their protection to Italy and viceversa.
REQUIREMENTS FOR FILING ITALIAN TRADEMARK APPLICATIONS
- Power of Attorney (no legalization required – term for late filing: 2 months)
- Representation of the mark (max 8x8cm), electronic version appreciated
- List of goods/services and international class(es)
EUROPEAN UNION TRADEMARKS
Italy is a member of the European Union, therefore a trademark protection in its territory can also be obtained through an European Union Trademark.
European Union Trademark Applications can be filed directly at the European Union Intellectual Property Office (EUIPO, former OHIM) in Alicante, Spain. E-filing is available and advisable since it features reduced filing fees.
A European Union Trademark automatically extends its protection on all the EU Countries.
Duration of a EU Trademark is 10 years from filing date. Earlier priority can be claimed upon filing and up to 3 months from filing date, by submitting a copy of the basic application. In case of earlier national trademark registrations in the EU Member Countries it is possible to claim Seniority. The prior acquired rights will be recognized by the EU Trademark starting from the earlier dates and for each Country where the same have arisen.
EU Trademark Applications are examined by EUIPO on absolute grounds only. A search report on prior EU trademarks is issued by EUIPO as information only.
After publication takes place, oppositions can be filed within 3 months from publication date by submitting an opposition notice and payment of a corresponding fee. After the ex-officio opposition admissibility, a cooling off period (which can be extended to a maximum of 24 months) is provided for, to enable amicable settlements between the parties and possibly avoiding further substantial prosecution of the opposition.
If no opposition is filed, the Certificate of Registration is issued within approximately 8-10 months from EU Trademark filing date.
REQUIREMENTS FOR FILING EUROPEAN UNION TRADEMARK APPLICATIONS
- General Authorization (not compulsory)
- Representation of the mark – electronic format appreciated (JPEG)
- List of goods/services and international class(es)
INTERNATIONAL REGISTRATION OF TRADEMARKS
The International Trademark enables, through a single application to be filed before WIPO in Geneva through the National or Regional Administrations, to obtain the registration and the protection of the mark in each one of the designated countries party to the Madrid Agreement and/or to the Madrid Protocol.