The Italian Trademark Home > Patent and trademark attorneys > Trademarks > Italian Trademark To Register a Trademark in Italy with the Guidance of Expert Consultants The Italian trademark is an important right for someone operating on Italian territory and is willing to distinguish itself, or distinguish its goods and services from those of the competition. It has a moderate price and is useful also to those starting a new activity and unwilling to make expensive investments. Having a trademark is important also for big companies. It is a strong and hard-to-attack right. In addition, if someone wants to use similar names, s/he has to ask for the consent of the trademark owner. Someone filing an Italian trademark has 6 months to extend it abroad hooking to the filing date of the Italian trademark (the so-called priority right), thus the Italian trademark represents also a strong base for the following extension.In brief, the Italian trademark is always suggested as a tool that plays an important role in counterfeiting lawsuits. A Trademark is Forever The Italian trademark gives its owner the exclusive right to use that name on the entire Italian territory for 10 years. At the expiration of the ten years, it can be renewed for 10 additional years and so on. The trademark decays if it is not used for 5 years from the day of registration. The cancellation is not automatic, it has to be stated by a judge after a specific request submitted by someone interested in canceling the trademark. Rely on Turini Group to protect your Trademark Discover our online services to protect a Trademark. Answer the questions to receive a quotation. Make the payment, upload the required documents, and monitor the status of your order in your reserved area! File your trademark online Claim priority for your trademark online REQUEST A TRADEMARK AVAILABILITY SEARCH ONLINE How to Register a Trademark in Italy The procedure to obtain a trademark in Italy is articulated. Preliminary choices How to file an Italian trademark application The registration procedure Oppositions Appeals against the Office’s decision Withdraw and limitation of an application Trademark transfer Norm of Reference Request a consultation Preliminary Choices Before filing a trademark, one should choose how to file it: if verbal or graphic, in which class and where. It is also important to conduct a novelty search to be sure that the chosen trademark has not been already registered by someone else. When the preliminary analysis has been carefully made with the support of a Trademark Agent, it is possible to go on with the filing of the application for registration. There are two types of application: The first filing application, in case the trademark is filed for the first time; The renewal application, used on the occasion of the request for renewal of an existing trademark at the expiration of 10 years. In the two cases the application has to be prepared differently. The application for registration has to be submitted online using a specific platform which our Trademark Agents are authorized to access. How to File an Italian Trademark Application How to file a trademark? In order to file a trademark application, it is required to fill in a specific form which will indicate: The data of the applicant who will become the owner of the trademark; The data of the trademark; The classes of goods and services for which protection is sought. The choice of the classes should be done with extreme care consulting the Nice classification of reference and paying attention to check the edition in force at the moment of the filing of the application. Today, it is no longer sufficient to indicate the number of the classes but it is also required to list the goods and services of interest. A sample – in colors or in black and white according to the choice – of the trademark shall be attached. Finally, the payment of the administration fee and of a variable amount of taxes depending on the type of trademark and the number of the classes is required. When filing a collective trademark, one should provide a copy of the regulation to use it. A good preparation of the application is as important as a good analysis of the sign before the filing because on the basis of these preliminary choices depends the possibility to defend the trademark in case of forgery. The Registration Procedure Once the application for registration has been filed, the Office issues an application number and a filing date which marks the beginning of the examination of the documentation which comprises a number of steps. A first formal and technical exam conducted by the UIBM (the Italian Patent and Trademark Office) which controls the formal correctness of the application (art. 148 and 156 CPI) and the absence of the so-called absolute grounds for refusal of registration. For instance, a trademark contrary to public policy can be rejected by the Office as well as an offensive trademark. If, on the other hand, the trademark passes this examination, it is published on the public Trademark Bulletin. From that moment, whoever feels offended by that trademark application – because they think that that trademark is similar with or identical to their earlier trademark, or because that trademark impinges on their right – may submit an Opposition to the registration before the UIBM within 3 months from the publication date. With the presentation of an opposition starts an administrative proceeding during which the trademark applicant has the opportunity to defend themself against the opponent. At the end of the opposition the Office will issue a judgment that could cause the granting or the rejection of the trademark. If no one submits an opposition, the trademark is granted. The trademark will receive a number and a day of registration and the owner shall collect the related certificate. Oppositions Art. 176 CPI provides that the trademark or the earlier rights can be used as grounds to oppose the registration of a trademark within 3 months from the publication of the application. It is important to remember that the “earlier rights” are not only earlier European trademarks but also national and international trademarks with effect in Italy. To submit an opposition, it is necessary to fill in a specific form, attach a copy of the earlier trademark or proof of the earlier right and explain the reason for the appeal. At the filing of the opposition, it is also requested the payment of the opposition fee. Upon receipt of the opposition and after having verified its admissibility, the UIBM informs the owner and gives the parties a deadline to submit the proof and the argumentation sustaining their motivations. Then it issues its decision. During this phase being assisted by a Trademark Agent is vital because the deeds that will be presented have to contain legal argumentation which are often very complex. Appeals to the Office’s decision One could resort to the Board of Appeals (art 135 CPI) to appeal against the measures of the UIBM rejecting, totally or partially, a filed application. The Board of Appeals includes magistrates and professors appointed through the Decree of the Ministry of the Economic Development. The judgment of the Board can be challenged before the Court of Cassation. Given the nature of the proceeding, it is required to be represented by a lawyer or an Industrial Property Advisor not just because of the particular difficulty of the subject but also because it is required by the law. Withdraw and limitation of an application The applicant has the chance at any moment – between the filing of the application and its granting – to withdraw the application (and therefore to renounce it) or to limit it, for example reducing the number of classes initially chosen. It can be necessary to withdraw or limit a trademark when a conflict arises with a third party having earlier rights. The trademark may be modified only under precise circumstances and without altering or enlarging its substantial protection. A change not only consented but due is related to the change of address of the owner of the trademark. Personal detail changes, renounces and limitations have to be communicated to the office submitting a specific application of change. Trademark transfer A trademark can be also transferred or licensed to thirds other than just used. The first case is something similar to a sale: the trademark changes “owner”; the second case is a sort of “rent” where the use of the trademark is granted to a third party. Contracts of trademark transfer are very delicate: they require a wide knowledge of the trademark that is being sold and, above all, purchased. It requires a technical study aimed at checking that the trademark is alive, that there isn’t any possible or current conflict, that there isn’t any coexistent agreement or similar. All this is attained through a careful analysis of the trademark (the so-called due diligence), without which one could risk buying an empty box. Deciding the value of the trademark is another relevant aspect: a hard task without the help of an expert. The transfer or license of a trademark has to be reported to the UIBM by a specific transfer application. The transfer is necessary for the effect to thirds and above all as a guarantee for the purchaser or licensee. Norm of Reference Decree Law no. 30 of February 10, 2005 (Industrial Property Code) Get in touch with our expert Dott.ssa Giulia Mugnaini Head of Trademark & Design Department Contact us
