The Italian Patent and Trademark Office (the “IPTO”) has introduced a new stricter approach to govern Italian trademark applications.
In particular, the IPTO will not accept registration applications (as they previously would) where the application seeks protection of the relevant trademark for the entire class of products (or services), pursuant to the Nice Classification, established by the Nice Agreement (1957), which is an international classification of goods and services applied for the registration of marks.
For all new trademark applications the registrant will be obliged to file a detailed and exhaustive list of those products and services included in each class for which it is seeking protection of the trademark.
This recent approach is based on the well-known decision of the Court of Justice of the European Union named “IP TRANSLATOR” (2012)”, which established new criteria for the interpretation of the classes of the Nice Classification.
For retailers and brand owners who previously enjoyed the ability to obtain broad class protection when they have registered their marks in Italy, this newer approach means a de facto reduction of protection of their trademarks along with the necessity to obtain appropriate legal advice before filling trademark applications with the IPTO as unspecific requests may lead to office actions and issues with the registration process/protection for the relevant trademark.