Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The main source of trademark law is the Industrial Property Code (CIP) adopted by the Italian government with Decree No. 30 of 10 February 2005. Also, the Civil Code is relevant, mainly as far as unregistered trademarks and other distinctive signs are concerned.

International law

Which international trademark agreements has your jurisdiction signed?

Italy is party to several international treaties, agreements and conventions, including:

  • the Paris Convention for the Protection of Industrial Property Rights (Paris Convention);
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights;
  • the Madrid Agreement and the Madrid Protocol on the International Registration of Trademarks;
  • the EU trademark system; and
  • the Nice Agreement on the International Classification of Goods and Services (Nice Classification).

There are also some bilateral agreements that may result relevant in trademark issues.

Regulators

Which government bodies regulate trademark law?

Trademarks are granted by the Ufficio Italiano Brevetti e Marchi (PT office). In general, the protection and validity of trademarks in Italy have been always ruled by law and thus enforced, at least in last instance, by the courts. However, an amendment of the IP Code has been recently approved that also gives the PT office the power to revoke trademarks, as an alternative to the courts. This new system is, however, subject to the issue of a specific bill of rules from the government, meaning it is impossible to predict when it will actually be viable.

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.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

According to the CIP, licence agreements may be recorded with the PT office. In this case, the licence shall be in written form. The record of the licence has the same (limited) effect of the record of the assignment and does not constitute a condition for the validity of the licence. There are no substantial benefits in registering a licence.

Parties are free to decide the terms and conditions of the agreement. A trademark licence agreement can vary depending on the parties and the goods or services involved, but typically includes the following information:

  • the parties involved;
  • the purpose of the agreement;
  • the effective date;
  • the mark to be licensed;
  • the good to be licensed;
  • the term of the licence;
  • the geographic scope of the licence;
  • consideration in the form of royalties;
  • quality control mechanisms;
  • confidentiality requirements, if any;
  • amendment and notices;
  • governing law;
  • venue; and
  • a termination provision.
Assignment

What can be assigned?

According to the CIP, all trademarks can be assigned. For a valid agreement, there is no requirement to assign the trademark with the company’s goodwill or with assets or a branch of the assets, but the law requires that the assignment shall not deceive the public. The rationale of this requirement is quite clear in theory (save the distinctive function of the trademark), but to date, no court has applied such to consider a trademark assignment invalid.

A trademark can be assigned for all the classes of goods or services for which it is registered as well as only some.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

National trademark assignments have no formal requirements as far as their validity is concerned, but shall be in writing in order to be registered in the PT office. No notarisation is required. Note that, instead, community trademarks need a written form to be valid.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

It is not mandatory to record an assignment that is fully valid, even if not recorded, in the sense that the new owner can enforce the trademark against third parties. The only effect of the record is to determine which assignee shall prevail in case of a multiple assignment of the same trademark. In such case, the legitimate owner will in fact be the first assignee that recorded the agreement even if their agreement was executed after the former.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Creditors can secure their credit with liens over a trademark. According to the prevailing opinion, security interests need to be in writing form and recorded with the PT office.

Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

In order to enforce a trademark, a trademark holder must start a legal an action before the ordinary civil courts. The Italian judicial system has established specialised corporate divisions of the civil court (and of the Court of Appeals) that are exclusively competent for these types of infringement actions.

Trademark infringement may also be criminally prosecuted (articles 473, 474, 474-bis, 517 and 517-ter of the Criminal Code) and trademarks are also protected by the provisions of Regulation (EU) 608/2013 concerning customs measures in relation to infringing goods.

The corporate divisions of civil courts may also revoke a subsequent registered dilutive or infringing trademark for invalidity. Note also that in the future - when (and if) the corresponding rules are be adopted by the industry ministry - it will be possible to revoke trademarks also by means of an administrative procedure before the PT office.

Procedural format and timing

What is the format of the infringement proceeding?

From a civil procedure perspective, to challenge a trademark infringement, a trademark holder must start a legal an action before the ordinary civil courts.

The Italian judicial system has established specialised corporate divisions that are exclusively competent for these types of infringement actions.

Trademark infringements cases usually last between two to three years in the first instance.

All forms of evidence are allowed but the decision on the evidence submitted during a case is left to the judge.

Trademark infringements may also be criminally prosecuted (articles 473, 474, 474-bis, 517 and 517-ter of the Criminal Code) and infringing goods may be seized by the police. Regulation (EU) 608/2013 concerning customs measures in relation to infringing goods is also applicable in Italy.

Burden of proof

What is the burden of proof to establish infringement or dilution?

Italian law does not recognise levels of burden of proof that exist in common-law countries. In cases regarding infringement and dilution, the burden lies on the plaintiff claiming infringement.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

An infringement action can be commenced by a trademark holder or - subject to certain conditions - by its licensee.

In addition to the possibilities offered by customs, administrative and civil protection, in some cases the trademark holder may file a complaint against the counterfeiter (before the Public Prosecutor's Office or local police station) or report the counterfeiting to the Guardia di Finanza (which, if criminal, will be passed to the Public Prosecutor's Office).

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Regulation (EC) 1383/2003 - that allows rights holders to apply for a customs action against goods suspected of infringing intellectual property rights - fully applies in Italy.

Regulation (EU) 608/2013 allows any rights holder or any authorised person to seize an infringing product by filing an application before the Central Authority of Customs in order to suspend the delivery of the imported goods bearing some trademarks for a case evaluation. After having checked the goods, the applicant has a deadline to claim the seizure thereof and to start the usual legal actions against infringement. Measures are usually resolved either via full-scale litigation or by means of preliminary proceedings.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Under the Italian legal system, the taking of evidence is governed by the principle that the scope of the proceedings is determined by the parties, as provided by the Civil Procedure Code. Hence, a court must base its judgment on the evidence submitted by the parties, ‘apart from those cases specified by law’. However, certain exceptions to this rule are set out in the following sections of the Civil Procedure Code:

  • section 117, which allows the informal questioning of the parties;
  • section 118, which allows inspections of persons and objects to be ordered;
  • sections 61 and 191, which allow the court to request expert opinions;
  • section 257, which allows the court to summon a witness who has been mentioned by another witness; and
  • section 281-ter, which allows a general court sitting with a single judge to order the taking of witness evidence if the parties’ account of the facts mentions individuals who would appear to be acquainted with the facts.

Italian law distinguishes between documentary and non-documentary evidence. Evidence governed by the Civil Code is referred to as ‘typical’.

Documentary evidence includes:

  • public documents;
  • private documents;
  • domestic files and records;
  • accounting records; and
  • copies of documents and contracts.

Non-documentary evidence includes:

  • witness evidence
  • written witness statements;
  • confessions;
  • formal questioning;
  • sworn statements; and
  • inspections.
Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

A preliminary injunction proceeding lasts an average of two months but timing varies from court to court. In cases of particular urgency, a judge may issue a provisional ex parte order at the beginning of proceedings. Such orders are normally granted in a few days. They are not, however, very common.

A decision in an urgency preliminary injunction proceeding can be set aside. This set aside procedure usually lasts between three to six months.

Actions on the merits for trademark infringements usually last between two to three years. An appeal against a first-degree decision also lasts about two years. A proceeding before the Supreme Court usually lasts three years.

Limitation period

What is the limitation period for filing an infringement action?

In relation to compensation for damages, the damaged party has five years to claim damages and the statute of limitations can be interrupted with the service of the writ of summons or a letter requesting the compensation of damages. If these actions have not occurred, the defendant can claim that the plaintiff is barred from claiming damages prior to five years from the start of the civil action.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The professional fees of a specialised attorney in a trademark litigation usually vary between €15,000 and €50,000 for a first-degree case depending on the firm and the complexity of the case. The total amount of court fees ranges between €1,000 to €2,000 depending on the value of the matter. A successful plaintiff may be awarded to recover all court fees and partially attorney’s fees.

Appeals

What avenues of appeal are available?

First-instance decisions can always be appealed before the Court of Appeals that re-examines the case. No leave to appeal is necessary.

The decision of the Court of Appeals can be further appealed before the Supreme Court, but just for violation of law or procedure. This means that the case facts cannot be re-examined. If the decision is upheld by the court, 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 discussed in the Supreme Court decision.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

The infringer - after a warning letter or when it has grounds to suspect that a trademark owner could be in the process of starting an action - can start a non-infringement action and also, in case of urgency, an urgent non-infringement proceeding.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The first remedy is the issuance of an injunction by the court against the infringing party. Along with the injunction, the court can issue a penalty or an order against the defendant to pay a certain sum to the trademark owner for any possible future violation of the injunction.

The decision on the merits may order the compensation of damages, including consequential damages and loss of earning. The decision may also order the defendant to pay to the plaintiff the profits of the infringement, to the extent that they exceed the damage.

Punitive damages are not allowed in Italy.

The CIP also provides for orders to withdraw the infringing goods from the market, and orders to destroy or hand them over to the trademark owner. The court may also order the publication of the decision in one or more newspapers or magazines and also on the infringer’s website.

The Criminal Code states (articles 473, 474, 517 and 517ter) that an infringer may be both sentenced to prison and condemned to pay a monetary fine. The decision may also order that the infringing products be confiscated and the defendant convicted can be issued with a seizure or a monetary sanction. Criminal law also provides for emergency measures like seizures of goods and evidence, aimed at finding the infringing goods. In the case of a criminal offence committed by a corporation, the company may be sentenced also to pay a (heavy) fine on the basis of the law concerning company crimes.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

The use of ADR techniques is not very common in trademark disputes because the jurisdiction of specialised courts is mandatory in cases of infringement or dilution.

Indeed, the trademark opposition procedure in front of the PT office provides for a cooling-off period during which the parties have to try to find a settlement solution in relation to the opposition of the filing of a trademark.

Another form of mediation is assisted negotiation, which consists of an agreement by which the parties to the dispute agree in order to resolve a dispute amicably, with the assistance of lawyers. Assisted negotiation is mandatory in litigation cases for requests for payment of any kind of sum, provided that it does not exceed €50,000.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Recent case law shows that Italian courts grant wide-ranging, extensive protection to well-known trademarks, but are reluctant to protect three-dimensional trademarks when the shape of the product is heavily influenced by technical matters.