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Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Italy has adopted a ‘mixed system’, using both first-to-file and first-to-use rules to determine trademark ownership. While the owner of a registered trademark is assisted by a rebuttable presumption of validity, unregistered trademarks are protected only if evidence of use with a qualified reputation is provided. 

Unregistered trademarks

What legal protections are available to unregistered trademarks?

According to Article 12(a) of the Industrial Property Code, the owner of an earlier unregistered trademark is entitled to challenge the later registration of an identical or similar mark for identical or similar goods or services if there exists a likelihood of confusion or association for the relevant public.

Protection against infringement of an unregistered trademark can rely on both unfair competition rules (Article 2598(1) of the Civil Code) and the Industrial Property Code’s procedural enforcement rules.

How are rights in unregistered marks established?

In order to establish unregistered trademark rights, in addition to satisfying the requirements of novelty, distinctive character, non-deceptiveness and lawfulness, a sign must have been used on the Italian market and must enjoy a “qualified reputation” among the relevant public. This means that the public – as a consequence of the use – should perceive the sign as an indicator of the commercial origin of the relevant products or services.

When the earlier use of an unregistered sign implies only local reputation, the earlier user has the right to continue to use the trademark locally without being entitled to challenge the novelty of the later trademark registration.

Are any special rights and protections afforded to owners of well-known and famous marks?

Yes. The owner of a well-known registered trademark can challenge the later use or registration of similar signs even if there is no similarity between the products or services (ie, there is no likelihood of confusion) for cases where the later mark could take unfair advantage of or be detrimental to the distinctive character or the reputation of the prior well-known trademark. However, it is unclear whether unregistered trademarks enjoy this enhanced protection as this is independent from a finding of likelihood of confusion.

In addition, Article 8.3 of the Industrial Property Code provides special protection for well-known signs, which include personal names, symbols or signs used in the arts, literature, sports and the names or abbreviations of events. It also provides that well-known signs may be registered or used as trademarks only by the person holding the relevant right or with his or her consent. 

To what extent are foreign trademark registrations recognised in your jurisdiction?

A foreign trademark registration that is not yet registered in Italy can enjoy protection as an unregistered Italian trademark if it is used with qualified reputation in the country or, even if it is not used in Italy, if it is already widely known by the Italian public under Article 6bis of the Paris Convention.

Further, the owner of a foreign registered trademark can challenge a third party’s bad-faith trademark filing or registration if it can show evidence that:

  • at the time of the filing, the registrant knew of the third party’s rights or legitimate interests in the mark, where such knowledge is actual or may be inferred from the circumstances; and
  • the applicant’s conduct is incompatible with honest and fair commercial practices.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

A trademark registration grants the exclusive right to use a mark in Italy from the date of filing. A trademark registration can be renewed every 10 years, without limit. Usually, trademark exclusivity covers only the products and services listed on the registration and similar products and services, with the exception of well-known trademarks, which enjoy enhanced protection extending to dissimilar goods and services.

A registered trademark is presumed to enjoy validity requirements (ie, novelty, distinctiveness, non-deceptiveness and lawfulness) unless a court declares the nullity of that mark.

The owner of a prior registered trademark is entitled to oppose the registration as a trademark of an identical or similar sign claiming identical or similar goods or services if, because the signs, products or services are identical or similar, there exists a likelihood of confusion or association. Even after expiry of the opposition deadline, the owner of an earlier trademark can challenge the validity of a later trademark before an Italian civil court.

Moreover, according to Article 20 of the Industrial Property Code, a registered trademark owner has the right to prevent an unauthorised third party from using in the course of trade:

  • an identical sign for identical products or services; or
  • an identical or similar sign for identical or similar products or services if, due to identity with (or similarity of) the signs and products or services there exists a likelihood of confusion or association.

Well-known trademarks enjoy enhanced protection extending to dissimilar goods or services, if their use without due cause allows them to take advantage of or is detrimental to the distinctive character or reputation of the registered trademark.

Article 22 of the Industrial Property Code extends the protection of registered trademarks to any use of the mark as a distinctive sign other than a trademark (eg, a trade name, shop sign or domain names).

Article 21 of the Industrial Property Code imposes a limit on the enforcement of registered trademark rights – a third party can use a registered trademark in order to provide information concerning its name, address or essential characteristics of the marketed product or service. This exception to trademark exclusivity applies on condition that the registered trademark is used by the third party in accordance with professional fairness.

Who may register trademarks?

According to Article 19 of the Industrial Property Code, the registration of an Italian trademark can be obtained by any person or legal entity – including foreign nationals and companies – that is making use, or proposing to make commercial use of the sign, directly or under licence. Article 19(3) of the Industrial Property Code also allows public entities (eg, state, regional, district and municipal administrations) to file trademarks.

What marks are registrable (including any non-traditional marks)?

In Italy, any sign capable of being represented graphically – in particular, words (including personal names), designs, letters, figures, sounds, the shapes of goods or their packaging, or chromatic shades – may be registered as a trademark, provided that the sign is capable of distinguishing the goods or services of one enterprise from those of other enterprises.

Can a mark acquire distinctiveness through use?

Yes.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

A trademark registration can be refused on the following absolute grounds:

  • a lack of distinctive character (ie, the sign is generic, descriptive or in common use, is constituted by a functional shape or is a public insignia);
  • the sign is contrary to the law, public order or principles of morality; or
  • deceptiveness as to the geographical origin, nature, quality of goods or services.

Absolute grounds of refusal can be raised both ex officio by the Italian Trademark Office and by any interested party within nullity court proceedings.

A trademark registration can be refused on the following relative grounds:

  • a lack of novelty due to the existence of a prior registered trademark valid in Italy;
  • conflict with an earlier right to the name, portrait or a well-known sign under Article 8 of the Industrial Property Code; and
  • conflict with another earlier IP right (eg, an unregistered trademark, copyright or design).

Relative grounds can be raised only by the holder of relevant earlier right, its assignee or the party with title thereto, and within court nullity proceedings or opposition proceedings. In opposition proceedings before the Italian Trademark Office, the grounds of opposition exclude prior unregistered trademarks, copyrights and designs.

Are collective and certification marks registrable? If so, under what conditions?

In Italy, collective marks are registrable by subjects whose function is to guarantee the origin, nature or quality of certain goods or services. They have also the right to allow the use of such marks by producers or traders.

A regulation concerning the use of a collective mark, the relevant controls and the related penalties must be attached to the registration application. Any modification to the regulation must be communicated by the applicant to the Italian Trademark Office.

As an exception to the general rule, a collective mark may consist of a sign or indication which serves in trade to identify the geographical origin of goods or services. However, in such event, the Italian Trademark Office may refuse registration if the requested mark creates unjustified privilege or prejudices the development of other analogous initiatives in the same territory. The grant of a registration for a collective mark consisting of a geographical name does not entitle the holder to prohibit a third party from using the name in the trade, provided that such use complies with professional fairness.

Collective marks are subject to all other provisions of the Industrial Property Code, provided that these are not incompatible with their nature.

Certificate marks are not specifically regulated in Italy. Nevertheless, some Italian scholars and case law consider that the regulation of collective trademark registrations also applies to certificate marks.

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