How to register a trademark in Italy. Rules and procedures

In order to register a trademark in a EU country, such as Italy, it is necessary choose an english speaking lawyers in Italy to be provided with the specific documentation by a law firm or a qualified consultant for trademarks, with extensive knowledge of the numerous aspects related to trademark registration, protection and defence. 

Types of trademark in Italy, trademark registration application, trademark invalidity.

In order for a trademark to be registered in Italy, it must meet the following criteria:

• it has to be new – although it is possible to register, in good faith, a trademark already in use abroad;
• it has to be distinctive – the object of registration must identify the three different types of mark:

• descriptive mark;
• word mark;
• generic mark.

A further distinction divides trademarks in:

• shape mark;
• sound mark;
• colour mark.

Lastly, a trademark registration can be divided in four types:

• Italian trademark;
• European trademark;
• Foreign trademark;
• International trademark.

The numerous classifications and features suggest that the aspects related to the choice of support, denomination, description as well as colour of a trademark, all concern the overall protection of its distinctive features. To this purpose, being assisted by an attorney for trademarks in Italy with a solid awareness of the laws that regulate this subject is absolutely crucial. There are several ways a trademark can identify a product in Italy, hence the division into:

• words marks;
• words and image marks;
• just image marks.

In the first case, registering the trademark entitles to its use along with any non-copyrighted image. In the second case, registration only covers the specific words-image combination. In the latter case, protection is granted to the registered image only – that is to say, to the chosen logo.  

Registering a trademark in a EU country, such as Italy, gives a right to its exclusive use in Italy only, and for the goods and services specified in the registration request. The holder of a registered trademark has full ownership: no one else can use the same trademark nor a similar one. The owner can forbid others from using it as well as allow its use against payment of a royalty. 

The inexpensive way to file the trademark registration application in Italy, in Europe and abroad

A trademark can be registered in two different ways in Italy:

• with the first filing application, which is submitted when the trademark is filed for the first time;
• with the renewal application, upon expiry of the 10-years term for renewing an existing trademark.

The first trademark filing application can be submitted online and certified by a digital signature. The delicate part of the registration concerns the classes of goods and services that the trademark claims. The choice of trademark classes must be operated according to the Nice Classification of reference, and the goods and services subject to the trademark must be indicated carefully and in detail. This is the most frequent mistake made when registering a trademark in Italy. The online platform also requires the upload of a graphic representation of the trademark, as well as the payment of a fee – amount and payment methods can be consulted on the Italian Patent and Trademark Office’s website.

The application can also concern a collective trademark – in this case, a copy of the regulations on the use of the trademark must be attached. 

The information included in the application as well as the correct registration procedure are of the utmost importance when it comes to defending the trademark in case of infringement. 

Trademark registration procedure in Italy

Once the application for registration is filed, the procedure of trademark examination is divided in two parts:

• a technical and formal examination by the Italian Patent and Trademark Office, to check the formal conformity of the application and the absence of absolute grounds of refusal, e.g. an offensive mark. In these cases, the Office can reject the application. 
• publication on the public Trademark Bulletin. 

Trademark protection. Trademark defence. Opposition to the registration of a trademark in Italy. 

The term to oppose to the registration of a trademark is 3 months from the publication date. Within this term, whoever believes their pre-existing trademark to have been copied or imitated can file an opposition to the registration of the new trademark. This is the start of an administrative process of defence of the reasons of each party, which ends with a decision of the Office to allow or reject the registration of the trademark.  

The grounds for opposition can be the following:

• the trademark is identical;
• the similarity between the two trademarks can create a risk of confusion for the public, or of association between the trademarks;
• lack of consent by the person entitled to register as trademark in case of portraits of people, names of people, signs used in the artistic, literary, scientific, political or sports field, names and acronyms of events and those organizations and associations which have no economic purpose.

In order to file opposition to the registration of a trademark, it is necessary to:

• fill in a specific form, available on the website of the Italian Patent and Trademark Office;
• attach a copy of the preceding trademarks or proof of the preceding rights;
• pay the opposition fees. 

Upon receipt of the opposition, the Office informs the applicant. The parties are given a term to find an agreement and to file proof and arguments to support their reasons. If an agreement is reached, the opposition ceases – otherwise, each party files a defence statement, after which a decision is issued. 

If no one files for opposition within the 3 months term, the registration is granted and the holder can collect the registration certificate.

Damiani&Damiani’s team of qualified professionals will provide you with the best assistance for your trademark registration. Contact us to request an evaluation, advice on the most effective course of action and a cost estimate.