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Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

In addition to certain articles of the Italian Civil Code (2569-2574), trademark law is governed Legislative Decree 30/2005, as amended, known as the Industrial Property Code, and its implementing regulation (Ministerial Decree 33/2010).

International law

Which international trademark agreements has your jurisdiction signed?

As well as being an EU member state subject to EU treaties and the EU Trademark Regulation (most recently amended by EU Regulation 2015/2424), Italy is a contracting party to the following international treaties:

  • the Paris Convention (entered into force in Italy on July 7 1884) covering industrial property rights and the repression of unfair competition;
  • the Madrid Agreement (entered into force in Italy on October 15 1894) and the Madrid Protocol (entered into force in Italy on April 17 2000) governing the international mark registration system;
  • the Nice Agreement (entered into force in Italy on April 8 1960) establishing an international classification of goods and services for the registration of trademarks;
  • the Stockholm Convention (entered into force in Italy on April 20 1977) establishing the World Intellectual Property Organisation;
  • the Nairobi Treaty (entered into force in Italy on October 25 1985) protecting the Olympic symbol;
  • the Agreement on Trade-Related Aspects of IP Rights (entered into force in Italy on January 11 1995) laying down minimum standards for national regulation of IP rights, including trademarks;
  • the Singapore Treaty on the Law of Trademarks (entered into force in Italy on September 21 2010) harmonising administrative trademark registration procedures; and
  • the Trademark Law Treaty (entered into force in Italy on April 26 2011) simplifying and harmonising the administrative procedures for national applications and the protection of marks.

Regulators

Which government bodies regulate trademark law?

Parliament and the government establish and amend the legal framework, while the Ministry of Economic Development adopts relevant implementing acts.

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.

Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

An agent may be given power of attorney through:

  • a power of attorney (no notarisation or legalisation required);
  • the filing application, if signed both by the owner and the agent (no notarisation or legalisation required); or
  • a notarised power of attorney (notarisation or legalisation required). 

What information and documentation must be submitted in a trademark registration application?

The trademark registration application must include:

  • an indication of the type of trademark (ie, word, device, three-dimensional or sound) and its representation;
  • the image of the trademark, if figurative;
  • the list of products and services claimed;
  • in case of a collective trademark, the regulation of use;
  • the priority date, if any, and supporting documents;
  • details of the owner;
  • details of the agent, if any, and his or her appointment;
  • an Italian address for service and indication of a certified email address; and
  • evidence of payment of the relevant taxes.

What rules govern the representation of the mark in the application?

Representation is regulated by Article 11 of Decree 33/2010.

Are multi-class applications allowed?

Yes.

Is electronic filing available?

Yes.

What are the application fees?

The application fees vary depending on whether it is a first filing or a renewal and the number classes involved.

Priority

How are priority rights claimed?

Priority rights are claimed by filing the Italian translation of the priority registration with the relevant details at the time of filing or within six months after.

Multiple priorities cannot be invoked under the same trademark application. The applicant must limit its application to one trademark only, subject to the right to file further applications.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

No.

Examination

What factors does the authority consider in its examination of the application?

The exam by the Italian Trademark Office involves:

  • verification of the admissibility conditions:
    • the applicant must be identifiable;
    • the trademark’s representation and the list of products or services must be provided; and
    • translations into Italian must be provided;
  • a formal examination of:
    • the details of the owner and the agent;
    • the deed of appointment;
    • the possible priority date;
    • the trademark representation; and
    • the list of products or services; and
  • a technical examination to exclude absolute impediments to the registration. 

Does the authority check for relative grounds for refusal (eg, through searches)?

No.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

The applicant has at least two months to reply to the authority’s remarks. If the deadline expires without the applicant replying, the application is rejected. However, the applicant can seek two months of the expiry of the previous grace period.

The authority may also invite applicants to supplement the documents accompanying the application within two months. If the applicant does not comply, the application is rejected.

Can rejected applications be appealed? If so, what procedures apply?

Rejected applications may be appealed before the Board of Appeal.

The appeal procedure is as follows:

  • The appellant serves the appeal to the Italian Trademark Office and files it before the Board of Appeal.
  • The Italian Trademark Office files its defensive brief.
  • The Board of Appeal rules on the admissibility of evidence and hears the parties.

Before the discussion each party may file explanatory briefs.

Registration

When does a trademark registration formally come into effect?

Trademark rights come into effect with the grant of the registration, and have retroactive effect to the date of the filing.

What is the term of protection and how can a registration be renewed?

The term of protection is 10 years from the date of filing, renewable for further 10-year periods.

The renewal application must include:

  • the number and date of the trademark to be renewed;
  • the number and the date of the first filing; and
  • whether the renewal is requested for all or part of products or services.

What registration fees apply?

No registration fees apply. 

What is the usual timeframe from filing to registration?

The usual timeframe is 12 to 18 months. 

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

The owners of earlier rights may oppose Italian and international application designating Italy within three months of:

  • publication of the trademark application in the bulletin; or
  • the first day of the month following registration of an international trademark published in the World Intellectual Property Organisation (WIPO) bulletin.

Two grounds of opposition are available:

  • an earlier identical trademark registered for identical goods or services or an earlier identical or similar trademark registered for identical or similar goods or services if there is a likelihood of confusion; and
  • earlier rights in portraits, names and well-known signs.

The opposition procedure has the following steps:

  • The opponent files an opposition notice.
  • The Italian Trademark Office informs the applicant of the opposition and the possibility to settle within the cooling-off period (two months, renewable up to one year).
  • If no settlement is reached, the opponent can substantiate the grounds of opposition and relevant documents within two months of expiry of the cooling-off period.
  • The applicant can file a defensive brief, together with a request for proof of use, within a term set by the Italian Trademark Office.
  • In case of proof of use, the opponent can file evidence of the effective use of the earlier trademark within 60 days of notice from the Italian Trademark Office relating to the proof of use.
  • The examiner issues a final decision.

The opposition procedure for international applications entails a longer timeline due to the interactions between the Italian Trademark Office and WIPO.

The award of the costs of the proceedings cannot exceed €300.

What is the usual timeframe for opposition proceedings?

The usual timeframe is roughly one to two years.

Are opposition decisions subject to appeal? If so, what procedures apply?

Opposition decisions can be appealed before the Board of Appeal, according to the procedure set out in Article 136 of the Industrial Property Code.

Removal from register

Non-use cancellation

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Trademarks can be cancelled after five years of non-use since the registration was granted. The cancellation may also be partial and relate to only some of the goods and services to which the registration refers.

A trademark can avoid cancellation if:

  • use of the trademark begins, by means of serious and genuine preparatory acts, after the five-year period has expired but before the holder is aware of the imminent filing of a cancellation action;
  • notwithstanding knowledge of the imminent cancellation action, effective use starts at least three months before the filing of the action;
  • the trademark holder can provide a legitimate reason for non-use; or
  • there is evidence of use of a similar trademark embodying the same distinctive character.

Cancellation for non-use can be discussed only in proceedings on the merits. The burden of (negative) evidence lies with the plaintiff, which relies mainly on presumptions.

Revocation

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

After a registration is granted, any revocation ground (due to non-use and initial or supervened deceptiveness) must be invoked in proceedings on the merits.

The possible grounds for a nullity action are:

  • initial lack or successive loss of distinctive character;
  • lack of novelty;
  • a bad-faith application;
  • unlawfulness of the trademark (eg, contrariety to public morality or a breach of an earlier design or copyright);
  • a lack of requirement for a valid registration of a shape trademark (the trademark consists of the shape of the product itself, has a technical function or adds substantial value to the product); or
  • a well-known sign applied for by an unentitled person in breach of Article 8 of the Industrial Property Code.

Who may file a request for revocation and what is the statute of limitations for filing a request?

Any interested party (ie, a competitor) can file a nullity action.

Cancellation and revocation actions can be started without time limits. However, according to the validation rule, the owner of an earlier trademark, or an unregistered trademark whose prior use and notoriety are not merely local, cannot start an invalidity action for a later trademark registration (unless it was applied for in bad faith) if it has tolerated the use of the latter continuously for five years. Tolerance implies knowledge of the existence of the later trademark and a failure to take legal action by the earlier trademark owner.

What are the evidentiary and procedural requirements for revocation proceedings?

The burden of proof in invalidity proceedings lies with the plaintiff, since the registration of a trademark provides a presumption of validity of the trademark. If invalidity is based on an unregistered trademark, its owner must prove the earlier qualified reputation of the trademark.

When claiming invalidity of a national Italian trademark, the plaintiff will transmit a copy of the writ of summons to the Italian Trademark Office.

The domicile chosen by the trademark owner and shown in the certificate will operate as the exclusive address of service and determine the competent court. The declaration of invalidity of a trademark – which has erga omnes effect – is transmitted by the court clerk to the Italian Trademark Office for its recordal. While a nullity declaration has retroactive effect, a declaration of cancellation for non-use has only future effect.

Appeal

What is the appeal procedure for cancellations or revocations?

Ordinary civil procedural rules apply to appeals on the invalidity of a trademark. Appeal proceedings on the merits may be brought before the appeal courts within six months of publication of the first-instance decision or 30 days after a decision is served by the other party. In appeal proceedings, no further evidence can be gathered and the dispute is decided on the basis of a re-examination of the first-instance file.

The appeal does not automatically suspend execution of the first-instance decision, but a request for a stay of the enforcement of the decision can be filed.

Surrender

What is the procedure for surrendering a trademark registration?

A national registration can be surrendered by means of filing with the Italian Trademark Office a specific declaration, which must also be registered at the Revenue Agency. The surrender can be total or partial.

Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

There are 22 specialised court divisions in Italy deputed to deal with trademark infringement disputes, as well as with nullity and cancellation actions.

Trademark disputes involving at least one foreign company are reserved to some of these specialised courts.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

Two kind of civil proceeding are available against trademark infringements:

  • full proceedings on the merits where the plaintiff can ask the full set of remedies, including compensation for damages; and
  • interim proceedings where the claimant can seek a restraining order, as well as seizure, description orders and products recall, but not damages.

While the longer proceedings on the merits incorporate a full evidentiary phase, the interim proceedings are quicker and simpler.

Issuance of an interim measure is subject to two requirements:

  • the urgency (ie, the risk that, in wait of a ruling on the merits, enacted exclusive rights may be irreparably harmed); and
  • prima facie case for the claim.

Since 2005 interim measures, such as restraining orders and product recall orders, are permanent decisions which do not require the instigation of a proceedings on the merits for their definitive confirmation.

With regard to criminal law, under the Criminal Law Code the counterfeiting of trademarks may amount to criminal offences against public faith and economic order, while consumer confusion does not come into play.

Article 473 of the Criminal Law Code punishes the counterfeiting (ie, reproduction) and altering (ie, partial reproduction) of the subject matter of the IP right or use of the subject matter of the IP right by imprisonment for up to three years and fines up to €25,000. In addition, the use of false or deceptive indications as to the country of origin (eg, ‘Made in Italy’ labels) can amount to criminal and administrative offences.

Further, monetary administrative penalties may also apply to the use of words or indications leading to the false belief that goods are patented or a trademark registered, or they are applied for the use of trademarks declared invalid (unless this conduct amounts to a criminal offence).

Who can file a trademark infringement action?

Any holder of a registered trademark can file a trademark infringement action. Exclusive licensees can file infringement actions. Other licensees may file infringement actions only with the consent (also implied) of the licensor, and can intervene in the infringement action.

Holders of unregistered trademarks can rely on unfair competition rules to tackle unauthorised use. 

What is the statute of limitations for filing infringement actions?

Infringement actions are not time barred. However, the judge may find that the time elapsed between the first infringement and the filing of the action is sufficient to determine a ‘preclusion due to coexistence’ – that is, a long-lasting coexistence in the market of the infringer’s trademark and the infringed trademark can lead the judge to find a lack of confusion and consequently to dismiss the infringement action.

What is the usual timeframe for infringement actions?

First-instance proceedings on the merits usually last between two and three years, while appeal proceedings may take up to two years. Interim proceedings usually last less than six months.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

A petition for interim measures is filed with the court which will handle the main case. After hearing both parties, the court issues precautionary measures. The measures may also be granted without the other party being heard if summoning that party might prejudice their implementation.

Preliminary injunction proceedings can be instigated before or during proceedings on the merits.

In the preliminary injunction the judge can impose a financial penalty for each breach of the order, as well as reimbursement of legal fees. The judge can also order the publication of the decision in newspapers and online.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

In the main proceedings, the judge can award compensation for damages and loss. Article 125 of the Industrial Property Code lists several criteria for the assessment of the amount to be paid by the infringer and states that compensation can never be lower than the amount of the royalty that the infringer should have paid for lawful use of the trademark. The other criteria are a disgorgement of infringer’s profits and a decrease in the plaintiff’s profits. In addition, possible non-material damages suffered by the plaintiff can be calculated (eg, reputational damages).

The remedy of disgorgement of the infringer’s profits – which must be explicitly requested – can be applied as an alternative to compensation for the plaintiff’s losses or the amount exceeding the plaintiff’s losses.

Purely punitive remedies are not available under civil law. However, the Supreme Court recently stated for the first time that they are not conceptually incompatible with the Italian legal system. The issue remains open. 

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

The EU Customs Regulation (608/2013) provides that a rights holder can file an application requesting the competent customs authority to take action with regard to goods suspected of infringing an IP right in one or more member states (a national or EU application).

Once granted, customs protection lasts for one year and is extendable at the applicant’s request. 

Customs protection entails the suspension of the release of, or the detention of, the goods whenever Customs identifies suspected goods, and requires Customs to notify the holder or declarant of the goods at issue. Customs will also notify the trademark holder (along with images of the blocked goods) and ask it to confirm the counterfeit nature of the goods within 10 working days, under penalty of release. If the applicant confirms the counterfeit nature, Customs will pass the file to the criminal courts for further prosecution. Destruction of the goods takes place at the judge’s order.

If the goods are blocked due to a lack of active customs protection, Customs can notify the owner that it can file a customs application within four days.

The Customs Regulation also provides a simplified procedure and a procedure for small consignments (goods below two kilograms in weight or of fewer than three units) which imply that the goods will be destroyed without infringement being ascertained. However, this is incompatible with the criminal law system and has been replaced by an administrative fine and forfeiture of the goods. 

Defence

What defences are available to infringers?

An infringer can deny the existence of a likelihood of confusion. Moreover, a defendant can react to an infringement action with a counterclaim of invalidity of the trademark.

In interim proceedings, the defendant can raise issues regarding the lack of likelihood of confusion and the invalidity of the invoked trademark only as factual arguments to deny the existence of the prima facie case for the claim. 

Appeal

What is the appeal procedure for infringement decisions?

Appeal proceedings can be brought before the appeal court within six months of publication of the first-instance decision or 30 days after the decision has been served by the other party. In appeal proceedings, no further evidence can be gathered; rather, the dispute is decided on the basis of a re-examination of the file of the first-instance proceedings.

Assignment and licensing

Assignment

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

Pursuant to Article 23 of the Industrial Property Code, a trademark can be assigned – through agreement, company mergers or inheritance – in relation to all or part of the products and services for which it is registered.

Recording the assignment is not required for the assignment to be valid, but it is necessary for the assignment to have legal effect against third parties and is used as a preference criteria among assignees of the same right. To record the agreement, a written document is needed.

A trademark assignment cannot be misleading for the public in relation to the essential features of the assigned goods and services (ie, the nature, quality and origin of the goods and services). For instance, an assignment that results in a material drop in the quality of the products, where the customers are not adequately informed of the assignment, would not be allowed. Breach of this rule may lead to cancellation of the trademark, and it is unclear whether the affected assignment remains valid. Further, a partial assignment that leads to a split between similar products and services will be subject to an assessment for non-deceptiveness.

Licensing

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

Pursuant to Article 23 of the Industrial Property Code, a trademark may be licensed, on an exclusive or non-exclusive basis, for all or part of the goods and services covered by the registration, and for all or part of the Italian territory. A licence agreement need not be recorded in order to be valid, but the licence must have legal effect against third parties and is used as a preference criteria among licensees of the same right.

In addition, a licence agreement must not be misleading for the public in regard to the essential features of the licensed goods and services – that is, the nature, quality and origin of the goods and services in respect of which the trademark is registered. Non-exclusive licensees must undertake to use the trademark for products or services of the same quality as those traded by the licensor. 

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

Article 23 of the Industrial Property Code provides that non-exclusive licensees must contractually undertake to use the licensed trademark only to distinguish products and services with the same features and qualities as those commercialised in Italy by the licensor under the same trademark.

More generally, typical licence agreement clauses cover:

  • the exclusivity or non-exclusivity of the licence and the possibility to sublicense;
  • quality control by the licensor on licensed products or services;
  • warranties and indemnification concerning possible infringement claims by third parties;
  • enforcement, maintenance and defence of licensed trademarks;
  • a change of control in the licensee’s company;
  • royalty payment terms and the licensor’s audit powers;
  • termination and post termination obligations, including sell off; and
  • governing law and jurisdiction.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

A security interest can be registered over both a trademark application and registration only for monetary credit, and must be recorded with the Italian Trademark Office to be valid.

Pursuant to Article 140 of the Industrial Property Code, if several security interests concur on the same trademarks the priority is determined based on the date of recording.

The cancellation of the recording of a security interest is possible only after the filing of the creditor’s declaration of consent (with an authenticated signature) or, if the cancellation is ordered by a final judgment, following the procedure for levy of execution.

Related rights

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

A sign that is registered as a trademark can be protected also as a design and under copyright laws.

A sign can be protected as both a trademark and a design if, further to being new and distinctive, it meets the requirements for registration as a design: novelty and individual character. In this case, the sign may enjoy both protection as a design – up to a total term of 25 years from the date of filing – and protection as a trademark.

A particular case of double protection relates to the shape of a product that can simultaneously:

  • produce on the informed user an overall impression that differs from the overall impression produced on such user by a design which has been made available to the public; and
  • act as an indicator of origin of the product or service itself.

However, Article 9 of the Industrial Property Code expressly states that when the shape of a product results from the nature of the goods, is necessary to obtain a technical result or gives substantial value to the goods, that shape cannot be registered as a trademark.

A trademark can also be protected under the Copyright Law (633/1941). In particular, a figurative trademark that enjoys a minimum degree of creativity can be protected as an original work for 70 years after the death of the author.

Further, the title of a copyrighted work, which is protectable under Article 100 of the Copyright Law, may enjoy trademark protection if it is new and has distinctive character. 

Online issues

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

Article 22 of the Industrial Property Code sets out the principle of the unitary character of distinctive signs. According to this principle, the use of a distinctive sign other than a trademark (eg, a shop sign, a company name or a domain name) which is identical or similar to a third-party trademark is prohibited when such use may cause a likelihood of confusion (and also a likelihood of association with the earlier trademark) due to the identity or similarity between the goods and services for which the earlier trademark is registered and the goods and services for which the sign is used.

Therefore, incorporating a trademark within a domain name may amount to a case of trademark infringement.

In order to address cybersquatting, in 2000 the Italian Naming Authority and the Italian Registration Authority implemented an administrative procedure of dispute resolution concerning the reassignment of ‘.it’ domain names. Such procedures are managed by arbitral bodies called service providers of dispute resolution. The domain name is reassigned after the following legal test is performed:

  • The domain name is identical or confusingly similar to a trademark on which the claimants enjoys exclusive rights.
  • The assignee of the domain name has no rights or legitimate interests concerning the aforementioned domain name.
  • The domain name has been registered and used in bad faith.

Before introducing a reassignment procedure, the claimant must activate an opposition procedure lasting up to 540 days that puts the domain name under a challenge status which impedes any assignment.

As an alternative to this administrative procedure (which can lead only to the reassignment or cancellation of the domain name), the owner of the earlier trademark may also seize the civil courts to obtain reassignment of the domain name or a restraining order not to use it.