Registration and use

Ownership of marks

Who may apply for registration?

Any person or legal entity is entitled to apply for a trademark. It is not required that the applicant carries out a business or a professional activity.

In case the trademark is a sign that has become well known or reputed in a non-commercial field (ie, the name of artists or social events), the title to file's corresponding application (and to use the name as a trademark) belongs only to the person or the entity that created such reputation.

Scope of trademark

What may and may not be protected and registered as a trademark?

Signs that may be registered as a trademark are protectable in the absence of registration as unregistered trademarks.

Both product and service trademarks may be registered. Article 7 of the CIP provides that 'any sign' can be registered as long as they:

  • are able to distinguish the source of the product of the owner; and
  • can be described in a way that can define clearly and precisely the object of the protection.

Article 7 of the CIP also provides a list of examples: words, including personal names, designs, letters, numbers, sounds, the shape of a good or its packaging, colour combinations or shades.

With respect to non-traditional marks, fragrances, smells and flavours may be registered. Position and movement trademarks may also be registered.

As far as three-dimensional marks are concerned, pursuant to article 9 of the CIP, signs consisting exclusively of the shape imposed by the very nature of the product, the shape of the product necessary to obtain a technical result or the shape that gives substantial value to the product may not be registered as a trademark.

Unregistered trademarks

Can trademark rights be established without registration?

Yes. The CIP and the Civil Code protect unregistered trademarks respectively as valid IP rights as well as against acts of unfair competition. An unregistered trademark is established by the use of the sign. Such use must be actual and shall extend to a relevant part of the Italian territory.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Based on the principles of Italian case law, a famous foreign trademark may benefit of the same scope of protection of a de facto trademark against posterior similar marks used by third parties only if the owner can prove that the mark is known also by a relevant part of the Italian public and that he is going to launch the corresponding products in the Italian market. On the other hand, even limited knowledge of the foreign trademark (ie, owing to the use in international airports or in foreign locations frequented by Italian tourists) may be sufficient to revoke a third-party registered trademark (on the basis of bad faith).

The benefits of registration

What are the benefits of registration?

A registered trademark:

  • is protected across all Italian territory, while an unregistered trademark's protection is limited to the geographical area in which it is used (which may be just a part of the territory);
  • is protected even if not used (within the limits of the five-year lapse);
  • is presumed to be valid, in the sense that the party that wants to revoke it bears the burden of proving the ground of revocation. In cases where a third party raises a non-use argument to have the trademark lapsed, it is the owner that shall give evidence of the actual use;
  • is protected, if it is well known and, according to the principles set out above, also beyond the likelihood of confusion or association, while an unregistered trademark is usually deemed to be only protected against likelihood of confusion or association while the corresponding possible dilution or tarnishing and misappropriation issues may be dealt exclusively based on unfair competition law;
  • even if the registered trademark loses its distinctive character, it is still valid in the case this loss has not been caused by a fact or an omission of the owner, while - when an unregistered trademark loses its distinctive power - the protection is lapsed, no matter how this happened;
  • the owner of a registered trademark can always enforce their rights against a subsequent trademark, while the owner of an unregistered trademark that is known at a local level cannot use their prior right to revoke the registration and to stop the use of a later-registered trademark; and
  • an opposition before the PT office only has grounds on a prior-registered trademark, but not on a prior-unregistered trademark right (but a unregistered prior trademark is a valid ground for revocation in a court action).
Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

When submitting a trademark application, the applicant must:

  • appoint a qualified representative;
  • designate the goods or services and the relative classes;
  • payment of the official fees; and
  • provide any documents on priority or that may give evidence about the fact that the trademark has acquired distinctive character before to the application.

Electronic filing is available in Italy. Trademark searches are not required prior to submitting the application.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The registration procedure usually takes between 10 to 13 months from the filing of the application.

Excluding the professional fees of a trademark attorney, the total amount of official fees in a single class is about €200. In a multi-class application, a fee of €34 for every additional class adds €101 to the original filing fee. Fees are increased by the number of classes reported in the application.

Registration comes into effect once it is published in the PT office bulletin.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The PT office follows the Nice Classification. Multiclass applications are available in Italy with an estimated saving of about €150 in official fees.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The PT office checks if the trademark is a registrable sign, whether it is distinctive and whether it is not misleading and does not violate the law. The PT office also ascertains that the specific bars to registration do not apply (namely in cases of portraits, names and well-known signs, for shapes of products and their packaging, and for certain crests, emblems, symbols and flags).

If the examination has a positive outcome, the application is published by the PT office in its bulletin. Following the publication, third parties may submit observations to the PT office, for an ex officio exclusion from registration. Trademark owners of earlier registered trademarks and the proprietors of rights on portraits, names or well-known signs can also bring an opposition to registration within three months of the publication. Observations and oppositions can be submitted by the applicant. If observations or oppositions are not made or the observations are disregarded, the trademark application is accepted. Otherwise, if observations or oppositions are admitted, the registration application is rejected.

The PT office does not investigate actual or potential conflicts with other trademarks; therefore, letters of consent are not a practice to overcome an objection based on a third-party mark.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

There is no requirement to submit proof of use before registration in Italy.

Anyone who has duly filed, in or for a state that is a member of Paris Convention or of another international convention ratified by Italy that recognises priority rights, a direct application to obtain an intellectual property title, enjoys a priority right beginning with the first application to file an application to register a trademark in other member states (in the case of the Paris Convention, the priority is six months).

A trademark must be effectively used within five years following registration and - after it has begun - its use shall not be suspended for more than five years, otherwise the trademark lapses through non-use and any third party can ask a judge for cancellation action against the trademark owner (which also bears the burden of proving the actual use).

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The use of markings used to indicate trademark use or registration is not mandatory. There are no substantial benefits in using such symbols, except in cases of descriptive marks or of marks that consist in the commercial name of a new kind of product (in order to avoid the lapse of distinctive power).

Appealing a denied application

Is there an appeal process if the application is denied?

As for administrative procedures, whenever the PT office rejects the trademark application, the applicant can bring an appeal within 60 days before the Board of Appeals of the PT office. Board of Appeals decisions may be appealed before the Supreme Court.

Judicial decisions of first instance can always be appealed before the Court of Appeals that re-examines the case.

The judicial decision of the Court of Appeals can be further appealed before the Supreme Court, but only for violation of law or procedure. This means that the case facts cannot be re-examined. If the decision is upheld by the Court, then the case is closed. Otherwise the Supreme Court may either decide itself the case or refer it back to the Court of Appeals for having it re-examined according to the principles of law pointed out in the Supreme Court decision.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

If the examination has a positive outcome, the application is published by the PT office in its bulletin. Third parties may submit observations to the PT office, for an ex officio exclusion from registration following the publication. Trademark owners of earlier registered trademarks and the proprietors of rights on portraits, names or well-known signs can also bring an opposition to registration within three months from the publication.

A brand owner can oppose a bad faith application in court for its mark in a jurisdiction in which it does not have protection.

Costs are usually in the range of €280 to file an administrative third-party opposition in front of the PT office.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The duration of the trademark is 10 years form the filing date, after which it can be renewed for another 10 years by filing a renewal application.

A trademark must be effectively used in the five years following registration and - after it has begun - the use shall not be suspended for more than five years. Otherwise, the trademark lapses for non-use and any third party can invoke the lapse for non-use.

Surrender

What is the procedure for surrendering a trademark registration?

The owner of a trademark may request the cancellation of their trademark at any time. The total or partial cancellation of the registration is not subject to any fee.

Related IP rights

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

Yes. Trademarks can be protected under other IP rights, such as copyright and designs provided that the trademark satisfies the requirements of protection of other IP rights. Also, unfair competition may be used in certain instances (ie, misappropriation or tarnishing of unregistered famous trademarks).

The effects of the protection under each right are different, pursuant to the regulations of each specific right.

Trademarks online and domain names

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

Domain names are generally treated by the courts just as a particular kind of unregistered distinctive sign. If a third party invokes rights against the domain name holder, this is a matter to be settled between the two by civil lawsuit or dispute resolution procedure.

Moreover, the Italian naming authority - which is entitled to resolve the problems of .it domain name ownership - is bound to respect the decision of the court and usually stays its proceedings if there is a lawsuit pending on the legitimate use of the domain name.

In Italy, a person whose trademark right is infringed online may bring an action based on trademark law, unfair competition law, civil law for protection of names and the law protecting business names.

In Italy, the naming authority that governs the .it domain name assignments provides for dispute resolution procedures governed by the Milan Chamber of Commerce.