Trademark Search in Italy

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Frequently Asked Questions
What is the trademark registration time frame?

The estimated time frame for the entire procedure is 18 months if there are no obstacles to the registration.

If I register my trademark in Italy, do I have protection in other territories?

Having a registered trademark in Italy means having protection in both the Republic of Italy and Republic of San Marino.

Do I need to sign a Power of Attorney?

Yes. Trademark application in Italy requires a power of attorney. 

Are there any benefits from a pre-filing use of the trademark?

No. Pre-filing use is not beneficial and can even be risky. If another person applies (in good faith) for an identical mark, prior user will have no right to oppose.

Will there be problems in case I don’t use my trademark after registration?

Yes. Registered marks that are not in used are at risk of revocation.

What are the types of trademark that can be registered in Italy?

Any mark or sign that can be represented graphically and can add a distinguishable element to a good or service is acceptable for registration: 

  • Words
  • Sounds
  • Names
  • Colors
  • Devices
  • Holograms
  • Trade dress
  • Motions
  • Shapes with 3 dimensions
What are the phases of application after a trademark has been filed in Italy?

The sequence of trademark application is as follows: 

  • Examination – Once the application is submitted to the trademark office authorities, some elements will be examined such as: classification, formality, deceptiveness, descriptiveness, and distinctiveness.
  • Publication – The specifics of the application will be posted online and on print so the public can have access. Details include the mark itself, application number and date, name and address of applicant, goods and services, among others.
  • Registration – If there are no obstacles to the application and nobody has opposed after the publication, the trademark office will then issue the registration certificate.
Are there any types of trademark that cannot be registered?

Yes. The following marks are prohibited in this jurisdiction: 

  • Marks that contradict public policy or go against standards of moral
  • Terms and words that have a general meaning
  • Marks that include flags, names or symbols of any state, region, nation or international organization
  • Marks that serve primarily as a name of a geographical location
Does Italy use the "Nice Classification" system?

Yes. Nice Classification system is effective in Italy.

Does the Community Trademark apply for Italy?

Yes. Community Trademark, known today as European Union Trade Mark (EUTM), takes effect in Italy.

Is there any possibility to claim priority in Italy?

Yes. The date of filing in your home country can be petitioned as the date of filing in Italy if: 

  • Your home country is a Paris Convention member
  • The application date in your home country is within 6 months prior to your date of application in Italy.
What do I need to do to satisfy the use requirement?

You must use the mark within 5 years from the date the registration was granted. The mark must be commercially used in this jurisdiction. Using it as a token is not acceptable.

Once my trademark has been registered, for how many years will be valid?

Registered marks in Italy are valid for 10 years.

What will be the renewal date of my trademark?

The first trademark renewal will take place on the 10th year from the date you filed the application.

Is it legal to use my trademark even if it is not yet registered?

Yes. Unregistered marks can be legally used for goods and/or services.

Does having a registered trademark in Italy afford me any right?

Registration is not mandatory to secure rights to a trademark. The first-to-use rule is applicable in Italy. Prior use is accepted and long-term use can even avert a later registration.

What is the web address of the trademark national office?

The Italian national trademark office is accessible via this link: http://www.uibm.gov.it/

Is there any need to use my trademark before I apply for registration?

No. This jurisdiction does not require prior use or intent to use before applying for trademark registration.

What are the grounds for a Trademark Application to be opposed?

The following are acceptable basis for opposition: 

  • Proprietary rights
  • Personal name rights
Who can contest my trademark registration?

Interested parties may challenge the registration namely: 

  • Owners of an earlier registered mark
  • An exclusive licensee
Is it possible to cancel a registration?

Yes. The following are grounds for cancellation: 

  • Bad faith
  • Proprietary rights
  • Prohibited marks in Italy
  • Registered mark was used in misleading/disparaging manner
  • Mark violated the moral principles or public order of Italy
  • Mark included a protected badge or emblem
  • Mark is generic
  • Mark is functional
  • Mark does not display distinctiveness
Are there any rights established by having a registered trademark?

Yes. Owners of registered marks in Italy establish the following: 

  • Exclusive rights to use and benefit from the mark
  • Rights to stand against conflicting applications filed at a later date
  • Rights to appeal for the cancellation of conflicting registrations filed at a later date
  • Rights to take legal action against parties that infringe the mark
  • Rights to obtain damages from infringement
  • Rights to authorize or license third parties to use the mark
  • Rights to appeal for seizure of counterfeit goods
How long is the opposition period?

The opposition period will immediately begin on the date of publication and will end three months after that date.

Is Italy a member of the Madrid System?

Yes. Italy is a member of the Madrid System.

Do I need to present periodic statement of use?

No. It is not required.

When should I renew my trademark?

Trademark renewals are made every 10 years.

What will be the renewal date of my trademark?

The first trademark renewal will take place on the 10th year from the date you filed the application.

Is there any documentation that should be presented when renewing a trademark?

A power of attorney is required when renewing a mark.

If my trademark expires, do I have a grace period?

After the expiration date, you can still renew your trademark within 6 months.

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