English
The average time frame for the registration approval is 18 months, if no objections or oppositions arise.
Having a registered trademark in Italy means having protection in both the Republic of Italy and Republic of San Marino.
Yes. Trademark application in Italy requires a power of attorney.
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.
Yes. Registered marks that are not in used are at risk of revocation.
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
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.
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
Yes. Nice Classification system is effective in Italy.
Yes. Community Trademark, known today as European Union Trade Mark (EUTM), takes effect 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.
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.
Registered marks in Italy are valid for 10 years.
The first trademark renewal will take place on the 10th year from the date you filed the application.
Yes. Unregistered marks can be legally used for goods and/or services.
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.
The Italian national trademark office is accessible via this link: http://www.uibm.gov.it/
No. This jurisdiction does not require prior use or intent to use before applying for trademark registration.
The following are acceptable basis for opposition:
- Proprietary rights
- Personal name rights
Interested parties may challenge the registration namely:
- Owners of an earlier registered mark
- An exclusive licensee
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
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
The opposition period will immediately begin on the date of publication and will end three months after that date.
Yes. Italy is a member of the Madrid System.
No. It is not required.
Trademark renewals are made every 10 years.
The first trademark renewal will take place on the 10th year from the date you filed the application.
A power of attorney is required when renewing a mark.
After the expiration date, you can still renew your trademark within 6 months.