The Italian Trademark Protection System

Any person or organization who intends to use or has actually used a trademark in commercial operations may apply for registration of an Italian trademark. Trademarks that have not been registered in Italy can also be protected if they meet the requirements of novelty, distinctiveness, non fraud, legality, and have gained a certain reputation in Italy.

The Patent and Trademark Office (UIBM) under the Italian Ministry of Economic Development (Ministero dello Sviluppo Economico) is responsible for granting and managing Italian trademarks.

UIBM China National Intellectual Property Administration of Italy

The Italian Patent and Trademark Office (UIBM) is under the Ministry of Economic Development and has two main responsibilities: combating infringement and counterfeiting, and protecting intellectual property rights.

Official website: www.uibm.gov.it

The main work of UIBM in protecting intellectual property rights includes granting patent rights, trademark rights, and design rights, providing related application and management services; Provide a package of financial relief measures for obtaining and utilizing intellectual property rights; Enhance the awareness of intellectual property protection among Italian enterprises, universities, and research institutions; Participate in projects and initiatives aimed at promoting and popularizing the application of intellectual property in the European Union and internationally.

Consultation hotline:+39 06 4705 5800 (time 9:00-17:00, excluding Saturdays and public holidays)

E-mail contactcenteruibm@mise.gov.it

Rights holders can report counterfeit cases and obtain legal advice through the Italian Anti Counterfeiting Hotline service, which is supported by UIBM. After analyzing the information it receives, UIBM can contact Italian police and the Italian Tax and Customs Service to take enforcement actions, and even facilitate law enforcement cooperation with other countries through the IPR desk network.

Reporting hotline:+39 06 4705 3800 (Monday to Friday 9:00-17:00)

mail anticontraffazione@mise.gov.it

Introduction to Italian Trademark Registration

3.1 Unregistered trademark protection system

Unregistered trademark protection requires meeting the conditions of novelty, distinctiveness, non fraud, legality, etc. required for registered trademarks, as well as being used in Italy and gaining a certain reputation. The protection includes:

3.1.1 It is possible to challenge trademarks that are similar or identical to those used on the same or similar goods or services that are later registered or applied for registration, provided that it may cause confusion or association among relevant consumers. If an unregistered trademark is only used in a certain region of Italy, the owner of the unregistered trademark only has the right to continue using it within that region and has no right to challenge a trademark that is later registered or applied for registration.

If others infringe upon an unregistered trademark, the owner of the unregistered trademark may obtain protection against unfair competition.

Registered abroad but not registered in Italy, those that meet the above conditions can be protected as unregistered trademarks in Italy, and are not necessarily required to be used in Italy, but need to be known to Italian consumers.

3.2 Trademark Registration Conditions

Any person or organization who intends to use or has actually used a trademark in commercial operations may apply for registration of an Italian trademark. The mark that can be registered as a trademark shall meet the following conditions:

3.2.1 Able to display, such as words, designs, letters, numbers, sounds, product shapes or their packaging, color combinations, promotional slogans, etc., but odors cannot be registered.

3.2.2 The ability to distinguish a certain product or service from other products or services is significant. General names, general logos, purely descriptive logos, commonly used logos, logos determined by function or commodity nature or bringing substantial value to commodities, and public logos are generally not allowed to be registered, except for those that obtain distinctiveness through use.

3.2.3 shall not violate laws, public morality, or order.

3.2.4 It shall not be fraudulent in terms of origin, nature, quality, etc.

3.2.5 shall not infringe upon the prior rights of others.

Prior rights include prior registered trademark rights, prior unregistered trademarks, prior copyrights, industrial property rights, personal rights, etc. For infringement of prior rights, the prior rights holder may raise objections in the objection procedure or file a lawsuit with the court in accordance with the law, and UBIM will not conduct active review in the review procedure.

3.3  collective trademark

Trademarks registered by individuals or individual organizations are called individual trademarks, and Italy also has a collective trademark system corresponding to individual trademarks. Collective trademarks can be used to control the geographical origin, nature, or quality of specific goods or services, and are generally registered by associations of producers, manufacturers, and service providers. Anyone who complies with the norms for the use of collective trademarks can use the trademark. Italy currently does not have a clear system for certifying trademarks.

3.4 Scope of registered trademark protection

Without permission, no one is allowed to use prominent marks (including trademarks, trade names, enterprise names, domain names, signs, etc.) that are identical to registered trademarks on the same goods or services. If it may cause confusion or association among consumers, it is not allowed to use prominent marks that are identical or similar to registered trademarks on the same or similar goods or services without permission.

Famous trademarks registered in Italy can also receive strengthened protection, that is, if the trademark may be improperly used or damage the distinctiveness or reputation of the well-known trademark in the future, it is not allowed to use or register distinctive marks that are the same or similar to the well-known trademark on dissimilar goods or services without permission.

3.5 Protection Measures

If someone else infringes on a registered trademark, the registered trademark owner can resolve the dispute by issuing a warning letter, negotiating with the infringer, initiating arbitration or civil litigation, and other means. Italy also stipulates trademark crimes, and Italian customs will take enforcement measures in accordance with the law.

Rights holders can also report counterfeit cases and obtain legal advice through the Italian Anti Counterfeiting Hotline service supported by UIBM.

3.6 Protection period

The protection period for a registered trademark is 10 years from the date of application, and can be renewed indefinitely for 10 years at a time.

Italian Trademark Registration Procedure 

If a trademark registration application is filed in Italy within 12 months from the date of the first filing of the trademark registration application in China, it shall enjoy international priority.

There are three ways to obtain a registered trademark in Italy: firstly, directly apply to UIBM for registration of an Italian trademark; Secondly, apply to register an EU trademark with the EU, which is valid within Italy; Thirdly, apply for international registration of the Madrid trademark and designate Italy as the effective country.

4.1 Procedure for Directly Applying for Registration of Italian Trademarks with UBIM

4.1.1 Submit Application

The application materials (in Italian) include the trademark and its displays, the designated category of goods or services to be used (using the Nice classification in Italy), information on the rights holder, the address for service of documents in Italy, priority documents (if any), etc. Trademarks can be applied for online, or the application materials can be submitted to UBIM or any Italian Chamber of Commerce. Applicants who do not have a place of business or residence within Italy shall entrust an agent to handle the application process.

4.1.2 Review

UBIM does not conduct trademark searches and does not actively review whether the trademark applied for registration infringes on the prior rights of others. However, it will examine the application materials to ensure compliance with other registration conditions (Articles 148, 156, and 170 of the Industrial Property Code). After UBIM submits its review comments, the applicant should reply within the specified time and make corresponding modifications and supplements, otherwise the application will be rejected. If the application is rejected, the applicant may appeal to the internal review committee of UBIM.

According to the Paris Convention for the Protection of Industrial Property, if an identical trademark registration application is filed again with INPI within 6 months after the first trademark registration application is filed in China, priority can be enjoyed.

Applicants residing outside of France should specify a delivery address within France.

4.1.3 Disclosure

If there are no issues with UBIM examination, it will be published in the patent gazette.

Within 3 months from the date of publication, any prior rights holder may raise an objection to the trademark application for registration. UBIM will inform the applicant of the objection, and the applicant and the objector can reach a settlement within the specified period. Otherwise, UBIM will make a final decision based on the materials submitted by both parties. If both parties are dissatisfied with the final decision of UBIM, they may appeal to the internal review committee of UBIM.

Within 2 months after the patent application is published in the Patent Gazette, any relevant personnel may also submit written opinions to UBIM, explaining the reasons why the trademark applied for registration does not meet the registration conditions. UBIM will notify the applicant of the relevant opinions and the applicant should respond accordingly.

4.1.4 Registration

After the application is made public, if UBIM confirms that there are no issues through the objection and submission procedures, it will issue a registration certificate to the applicant and make the registration public. The registered trademark will take effect retrospectively from the date of application.

Any interested party may file an invalidation lawsuit to apply for the revocation of a registered trademark that does not meet the registration conditions, such as lack of distinctiveness from the beginning or subsequent loss, malicious application, violation of law or public morality, technical functionality, infringement of prior rights of others, etc. In addition, if a trademark is not put into use for five consecutive years from the date of registration, it may be sued by others for cancellation of registration.

After trademark registration, the trademark owner can also apply for abandonment.

The registered trademark right can be transferred or licensed to others for use, but if the transfer or license is not filed, it cannot be used against a third party.

Introduction to Italian Trademark Office Fees