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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.

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