TRADEMARKS FILING AND PROSECUTION IN ITALY
A sign that can be represented graphically, such as: words, including the names of people, drawings, letters, figures, sounds, form of the product or its packaging, the combinations or shades of colour, which is used by a body or a Company to distinguish itself, the products and/or services which it produces, and/or markets.
Trademark in Italy may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | Italian Patent and Trademark Office (UIBM) |
| Filing principle | First-to-file |
| Nice classification | Yes |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | Yes |
| Documents required for filing a trade mark application | 1- Power of Attorney (POA) simply signed 2- Certified copy of the priority document if claimed, with English translation. |
| Requirements Details for filing | Name and address of the applicant, clear representation of the trademark, list of goods and/or services. |
| Prosecution process | Filing, examination, publication (Opposition period- 3 months), registration, renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademark searches in Italy
Under the “First to File” principle, if any other applicant files application for an identical or similar trademark used for identical or similar goods and services after the first applicant has applied, the later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Italy can be conducted for word mark, device etc. An official search can be conducted at the records of the Italian Patent and Trademark Office (UIBM) for similarity. The official website also encourages you to conduct a similar mark search on their online database to ensure that there is no similar trademark existing on the register which is identical or similar to applicant’s trademark.
It is advisable to conduct comprehensive trademark clearance search in Italy to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Italy. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Italy can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark applications in Italy
A person may file multi-class or single class trademark application in Italy.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Italy
Ordinary trademark applications filed in Italy are applications without claiming any priority. Multi class trademark applications may also be filed in Italy. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Italy /Convention trademark applications Italy:
A priority trademark application may be filed in Italy. A priority trademark application should be filed in Italy within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Italy within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Italy follows the nice classification of classes. Italian Patent and Trademark Office (UIBM uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Trademark Examination in Italy
Under the formal examination, Italian Patent and Trademark Office (UIBM) has expert examiners and they would examine the applications complies with the provisions of Articles 156 (for individual trade marks) or 157 (for Collective or Certification trade marks) of the Industrial Property Code (content of the application, priority, etc.).
Afterwards in the technical examination, the examiners in the Italian Patent and Trademark Office (UIBM) would proceed the applications by examining under the Articles 170 of the IPC, to ascertain that there are no absolute grounds for refusal of the registration.
Further, within the deadline a set by the Office, the applicant need to file a response depending on the reasons for the refusal and with evidence in order to overcome the objections.
Trademark Publication in Italy
Once the examination process is completed and there is no ground for refusal, then the captioned application will be published on the official gazette for the period of three months and any interested party can file an opposition notice.
Trademark registration in Italy
After the examination process is completed and the mark is accepted for registration, the mark will be registered for a period of 10 years from date of application and the registration certificate is issued.
Trademark Renewal in Italy
You can renew your trademark right by filing a request for renewal one year before the trademark right expires.