All questions

Intellectual property

i Brand search

Brand searches are carried out among Italian and EU applications and registrations, and international registrations with effect in Italy to verify that there is no identical or similar trademark nor reference to identical or similar products or services that could prevent the use of the protected trademark relevant to the franchise nor be a valid basis for starting a nullity action against the trademark.

Internet searches are also carried out to verify the validity of previously traced trademarks, if any, and also any prior use of identical or similar trademarks or identical or similar products or services that could present a challenge to the validity of the protected trademark relevant to the franchise.

It is also possible to carry out similar searches regarding designs rights for Italian and EU designs.

ii Brand protection

If searches do not identify any obstacles, an Italian trademark application can be filed in respect of the goods or services that are the subject of the franchise. The application will be examined and then published by the Italian Patent and Trademark Office. If no objections are raised by third parties within three months of the date of publication, the relevant registration will be issued.

In Italy, rights run from the filing date of the application. Moreover, within six months of the filing date, it is possible to extend the protection in other countries, claiming priority under the Paris Convention (Article 4).

Italian and EU design applications can be also filed and the registration process is straightforward as no examinations are carried out by the relevant offices.

iii Enforcement

Franchise-related intellectual property rights can be enforced on an administrative and a judicial level.

It is possible to file oppositions against subsequent identical or similar trademarks referring to identical or similar products before both the Italian and the EU trademark authorities. Moreover, cancellation actions can also be brought before the European Union Intellectual Property Office, which administers the EU Trade Mark.

At the judicial level, trademark owners are entitled to start the following types of actions:

  1. infringement and non-infringement actions (including possible counterclaims for revocation or invalidation of the trademark at issue);
  2. action for revocation or invalidity; and
  3. all other actions regarding trademarks (i.e., licence disputes).
Infringement and non-infringement actions

The owner of a registered trademark is entitled to start proceedings based on its trademark rights. The owner of a non-registered trademark and the owner of an application for registration of a trademark have the same right.

In cases of infringement, the following remedies may be requested of the competent court:

  1. prohibition of the manufacturing, commercialisation and use of the infringing goods;
  2. seizure of the infringing goods;
  3. withdrawal of the infringing goods from the market;
  4. a penalty to be paid for every violation or non-fulfilment of the decision or for every day of delay in the execution of what was provided by the decision;
  5. destruction of the infringing goods;
  6. assignation of the infringing goods to the trademark owner;
  7. compensation of the damage suffered by the trademark owner;
  8. surrender of the profit enjoyed as a result of the infringement;
  9. publication of the decision at the defendant's expense; and
  10. administrative fines.

Moreover, as long as the two requirements of the fumus boni iuris (i.e., likelihood of the validity of the enforced trademark and of the infringement) and of the periculum in mora (i.e., urgency of the requested measures) are deemed to subsist, Italian legislation provides for the possibility for the trademark owner to ask for different preliminary measures.

In cases of trademark infringement, the two most important measures are seizure – which may apply to allegedly infringing goods as well as goods with which the infringement is carried out – and the preliminary injunction. In granting the injunction, the court may also impose a penalty for every violation or day of delay in complying with the court's order.

Another very typical measure of the Italian system is the 'description', which is aimed at gathering evidence of the claimed infringement when it is not otherwise available (e.g., when the purchase of goods is not feasible or not sufficient to provide evidence of the infringement).

In those cases in which the summoning of the counterparty is likely either to compromise the effectiveness of the granted precautionary measures or to irreparably damage the interests of the applicant, the above-mentioned precautionary measures can be granted ex parte and the court should set the hearing for the appearance of the parties no later than 15 days from the issuing of the order.

Along with the order granting the precautionary measures, the judge is required to provide a term for the parties to start the relevant proceedings on the merits (unless the measures themselves suitably anticipate the effects of a decision issued in proceedings). In the absence of the provision of this term, the proceeding may be started no later than 20 working days (or 31 calendar days, whichever term is the longer) from the communication of the order. If the parties fail to proceed within this term, the granted precautionary measures lose any effectiveness, with the exception of those measures that anticipate the effects of the decision in the action on the merits (injunction orders are deemed to be included in such measures).

Action for revocation or invalidity

Any interested party can seek the invalidity of a trademark for lack of distinctiveness, bad faith at the time of filing of the application or other absolute grounds for invalidity within a judicial proceeding aimed at obtaining the invalidation of a trademark, its revocation for non-use or because it has become generic or misleading.

In addition, the owner of an earlier trademark may claim before the relevant court the revocation of a trademark (1) for lack of novelty because of the existence of prior trademarks; (2) because the contested trademark infringes a third party's copyright, intellectual property or other exclusive right; (3) because the contested trademark infringes a third party's right on his or her name or portrait; (4) because the contested trademark has been registered by a non-entitled subject. Such actions can be started by the prior right owner or by the relevant assignee only.

iv E-commerce

Building an online franchise network sets a number of issues not only on the structural or organisational side, but also from a juridical standpoint.

In this last respect, the most likely issues to be explored by literature and case law would relate to:

  1. the way in which the know-how would be transferred during the contract and how the franchisor could be protected upon termination of the agreement in that regard;
  2. the protection of the trademarks upon termination of the contract; and
  3. the scope of the possible exclusivity right upon the franchisee, since no specific reference could be made to territory.