1. Relevant Authorities and Legislation
1.1 What is the relevant trade mark authority in your jurisdiction?
The relevant trade mark authority in Italy is the Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi – UIBM).
1.2 What is the relevant trade mark legislation in your jurisdiction?
The relevant trade mark legislation is the Italian Code of Industrial Property, the implementing Regulation of the Italian Code of Industrial Property and Italian Civil Code.
2. Application for a Trade Mark
2.1 What can be registered as a trade mark?
You may register as a trade mark any sign that is capable of being represented graphically, provided that such signs are capable of distinguishing the good or service of one undertaking from those of other undertakings. In particular: words, including personal names; sounds; the shape of goods or of their packaging; colour combinations; or tones, may be registered as trade marks.
2.2 What cannot be registered as a trade mark?
According to the Italian Code of Industrial Property, the following signs shall not be registered as trade marks:
1. signs that are not capable of being represented graphically;
2. portraits of persons without the person's consent and after their death, without the consent of close relatives;
3. signs consisting exclusively of the shape required by the 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;
4. signs that consist of coats of arms or other signs considered in existing international conventions on the subject matter and within the limits provided in such conventions;
5. signs containing symbols, emblems and coats of arms which are in the public interest, unless consent is given by the appropriate authorities;
6. signs that lack novelty (due to the fact that the sign for which an application is filed is identical or similar to another sign);
7. signs that lack distinctive character;
8. signs that are contrary to the law, public policy or accepted principles of public morality;
9. signs that can mislead the public; in particular, with reference to the geographical origin, nature or quality of the goods or services; and
10. signs whose use would represent an infringement of others' copyright or industrial property right, or of other parties' exclusive rights.
2.3 What information is needed to register a trade mark?
In order to register a trade mark in Italy, it is required to point out the name of the applicant, the address of the applicant (as well as email address), the percentage of ownership of the sign, a description of the trade mark to be filed (either if it is a word mark or a figurative trade mark), and the list of goods and services claimed. If the trade mark is filed electronically, a .jpg file with the image of the trade mark (including for word trade marks) shall be filed. If the trade mark is filed in paper form, the reproduction of the trade mark shall be filed in A4 paper format. In the event of a priority claim, the references (trade mark application/registration number) of the claimed trade mark shall be specified.
2.4 What is the general procedure for trade mark registration?
The applicant files the trade mark application either directly before the UIBM or indirectly through the competent Chamber of Commerce, and afterward receives the receipt of filing and a receipt containing the amount of the official fees to be paid. The trade mark is officially filed as soon as the applicant pays the filing fees. The UIBM then: (i) verifies the admissibility of the application (indication of the applicant, reproduction of the trade mark and indication of the goods and services claimed); (ii) conducts a formal examination (regarding the completeness of information contained in the application form); and (iii) examines the lack of absolute grounds for refusal. After about one year from the filing date (on average) and provided that the UIBM does not raise objections, the trade mark gets published in the Trademark Bulletin. From the date of publication, a three-month period runs, during which: (i) third parties that own a trade mark already registered in Italy and with effect in Italy from an earlier date; (ii) third parties who filed an application for registration of a trade mark in Italy on an earlier date or that has effect in Italy from an earlier date by means of a right of priority or a valid claim of seniority; (iii) a licensee with the exclusive use of the trade mark; or (iv) persons, entities and associations that have prior rights on a person's names or portraits and well-known signs, may file an opposition to the registration of the trade mark. Starting from the date of publication, any interested third parties can file observations with the UIBM, explaining the reasons why a trade mark shall not be registered. If such observations are deemed relevant by the UIBM, it informs the applicant, who has 30 days in which to reply to such observations.
2.5 How is a trade mark adequately represented?
If the application is filed electronically, a .jpg file is deemed sufficient for the sake of graphical representation. In the event of a claim of colours, a simple indication of such colour is considered sufficient. If the application is filed non-electronically, there are no specific rules to be followed: the reproduction of the trade mark shall be clear enough to understand what the scope of protection is.
2.6 How are goods and services described?
The UIBM accepts applications claiming a heading from the Nice Classification system; however, protection will be granted only for those terms that are covered literally by the meaning of the terms of the heading. The UIBM provides the applicant with a list of accepted goods, but also allows the description to be customised if necessary.
2.7 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?
An Italian trade mark registration grants the exclusive right to use the registered trade mark in Italy. Furthermore, due to the 1939 Convention of Friendship and Good Neighbourly Relations between Italy and San Marino, both states undertake to prevent in their respective territories, any usurpation or counterfeiting of trade marks regularly registered and protected in the other state.
2.8 Who can own a trade mark in your jurisdiction?
A trade mark can be registered by a physical person or company who uses it, or proposes to use it, in the manufacture or trade of goods, or in the provision of services.
A trade mark may also be registered by agencies of the country, regions, provinces and municipalities, including with respect to distinctive graphical elements taken from the cultural, historical, architectural or environmental heritage of the corresponding territories. Please note that in the latter case, the revenues deriving from the use and exploitation of the trade mark for business purposes shall be used for financing institutional activities or for covering past deficiencies of the entity.
2.9 Can a trade mark acquire distinctive character through use?
Yes, through a secondary meaning. Italian law does not provide specific criteria to understand the duration or intensity of the use of a sign in order to acquire secondary meaning. However, the case law states that widespread use of the sign at the national and international level, as well as lasting advertising campaigns, may support the acquired distinctiveness of a trade mark. Please note that it is advisable to gather such proofs of use in a timely manner and before any proceedings.
2.10 How long on average does registration take?
It takes about a year-and-a-half, starting from the filing date, to register a trade mark.
2.11 What is the average cost of obtaining a trade mark in your jurisdiction?
The official fees for filing a trade mark in one class are 177.00 euros and 34.00 euros for each additional class.
2.12 Is there more than one route to obtaining a registration in your jurisdiction?
The routes to obtain a trade mark registration in Italy are:
1. filing a national trade mark application before the UIBM;
2. filing a European Trademark application before the EUIPO; and
3. designating Italy through an international trade mark application under the Madrid system.
2.13 Is a Power of Attorney needed?
Yes, if the applicant files the trade mark with the support of an agent.
2.14 If so, does a Power of Attorney require notarisation and/or legalisation?
No legalisation or notarisation is required; a simple signature is sufficient.
2.15 How is priority claimed?
Priority shall be claimed at the moment of filing and specifying the trade mark's data (such as country, application date and registration number). A certified copy of the prior application shall also be filed. Please note that priority can be claimed while filing the trade mark application or within two months from the trade mark application date.
2.16 Does your jurisdiction recognise Collective or Certification marks?
The Italian Code of Industrial Property recognises Collective marks but there is no reference – for the moment – to Certification marks. However, please note that European Union Directive n. 2436/2015 has expressly introduced Certification marks. Therefore, and since Italy will have to transpose such European Union Directive by 14 January 2019, it is likely that Certification marks will be formally introduced in Italy.
3. Absolute Grounds for Refusal
3.1 What are the absolute grounds for refusal of registration?
See question 2.2.
3.2 What are the ways to overcome an absolute grounds objection?
Within the time limit provided by the UIBM, after having raised a refusal based on absolute grounds, the applicant may file a reply. In particular, in the event of lack of distinctive character, the applicant may prove an acquired distinctive character due to the use that has been made of the trade mark.
3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
The decision of refusal of registration may be appealed before the UIBM's Board of Appeal within 60 days from the communication of the decision of refusal of registration to the Board of Appeal.
3.4 What is the route of appeal?
The appeal shall be served to the UIBM, as well as to any counterparty to which the decision of refusal makes reference, within 60 days starting from the date the claimant has acknowledged the decision. The served claim, together with the receipt of the appeal office fees, a copy of the appealed decision and any further document the plaintiff wishes to file in order to support his claims, shall be filed before the UIBM or the competent chambers of commerce. As soon as the UIBM receives the said documents, it appoints the competent Board's division and examiners, who will schedule the relevant deadlines for filing writs and documents in support thereto. The Board might also request evidence. The Plaintiff is also entitled to ask permission to orally discuss the matter before the Board of Appeal, which finally issues its judgment of refusal or granting of the appeal.
4. Relative Grounds for Refusal
4.1 What are the relative grounds for refusal of registration?
The Italian Code of Industrial Property does not provide for refusal of registration based on prior existing rights.
4.2 Are there ways to overcome a relative grounds objection?
This is not applicable; please see question 4.1 above.
4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
This is not applicable; please see question 4.1 above.
4.4 What is the route of appeal?
This is not applicable; please see question 4.1 above.
5.1 On what grounds can a trade mark be opposed?
A trade mark may be opposed if:
1. it is identical or similar to a trade mark already registered by others in Italy or having effect in Italy following an application filed on an earlier date or having effect from an earlier date due to a right of priority or a valid claim of seniority for identical goods or services;
2. it is identical or similar to a trade mark already registered by others in Italy or having effect in Italy following an application filed on an earlier date or having effect from an earlier date due to a right of priority or a valid claim of seniority in relation to goods and services that are identical or similar, if there is a likelihood of confusion (or a likelihood of association between the signs) with reference to the public;
3. it is identical or similar to the portrait of a person and it has been filed without such person's consent;
4. it is identical to the name of a person, other than the one who has applied for registration, and such use harms the reputation, creditworthiness or dignity of those who have the right to bear those names; or
5. the sign is well known and consists in name of persons, signs used in the field of art, literature, science, politics or sports, and it has been filed without the consent of the qualified person.
5.2 Who can oppose the registration of a trade mark in your jurisdiction?
An opposition may be filed by the owner of an earlier trade mark, filed or registered in Italy (or having effect in Italy) by the exclusive licensee of the earlier trade mark, or filed by the persons, entities and associations indicated in points 3, 4 and 5 under question 5.1 above.
5.3 What is the procedure for opposition?
As soon as a trade mark is considered registrable by the UIBM, such trade mark is published in the Trademark Bulletin. The three-month opposition period commences on such date. Please note that, with reference to international trade mark registrations designating Italy, the opposition shall be filed within the first day of the month following the month in which the international trade mark was published in the World International Property Organization's (WIPO) Bulletin.
The opposition must clearly point out: the name of the opponent; the identification of the earlier trade mark; the goods and services upon which the opposition is based; and the main grounds of the opposition. The opponent shall also identify the opposed trade mark, the applicant and the goods and services against which the opposition is brought. The opponent shall also file proof of payment of the opposition fees.
After the opposition is filed, the parties have a two-month cooling-off period (that is extendable upon common request of the parties) during which they may reach a settlement.
Afterwards, and in the event that no agreement is reached by the parties, the opponent must file, within two months, a copy of the application or registration certificate in the case of a non-Italian earlier trade mark, documents proving the claimed seniority or priority (if any), any other document proving the claims, and a writ with the allegations and statements in which the opposition is grounded. Please note that the defendant might, if the prior trade mark has been registered for more than five years, request the opponent to provide the UIBM with proof of use of the trade mark for the goods claimed.
The examiner will decide whether to accept or reject the objection. Such decision may be appealed before the Board of Appeals.
6.1 What happens when a trade mark is granted registration?
When a trade mark is registered, the UIBM sends a formal communication with a registration receipt and registration certificate.
6.2 From which date following application do an applicant's trade mark rights commence?
Trade mark rights start from the registration date, but they are backdated at the filing date. Please note that the right to sue for infringement commences as soon as a trade mark application is filed.
6.3 What is the term of a trade mark?
An Italian trade mark registration lasts 10 years commencing from the date of filing. A trade mark can be renewed every 10 years and within the deadline of the date of filing. However, the trade mark may still be renewed during a six-month grace period and by paying a "late renewal" fee.
6.4 How is a trade mark renewed?
A trade mark is renewed directly before the UIBM or through the competent Chamber of Commerce by filing the renewal form and paying the renewal fees. The official fees for filing a renewal of a trade mark in one class are 67.00 euros and 34.00 euros for each additional class.
7. Registrable Transactions
7.1 Can an individual register the assignment of a trade mark?
The assignment of a trade mark may be registered; the aim of such registration is to inform third parties of the trade mark's fate. The assignment may be recorded by filing a form and attaching thereto either the original or certified copy of the deed of assignment; each document must be in compliance with stamps and registration taxes, if applicable.
7.2 Are there different types of assignment?
A trade mark might be assigned in its entirety or for part of the goods and services it claims.
7.3 Can an individual register the licensing of a trade mark?
A licence agreement may be registered but is not compulsory under Italian law.
7.4 Are there different types of licence?
The Italian jurisdiction recognises both exclusive and non-exclusive licence agreements, and a written form for licence agreements is not mandatory.
7.5 Can a trade mark licensee sue for infringement?
Exclusive licensees can sue for infringement. Please note that, according to the prevalent case law, non-exclusive licensees are not entitled to sue for infringement. However, part of the doctrine and case law admits non-exclusive licensees to sue for infringement only with the trade mark owner's consent.
7.6 Are quality control clauses necessary in a licence?
Quality control clauses are not mandatory under Italian law.
7.7 Can an individual register a security interest under a trade mark?
Security interests may be registered by filing a specific form and attaching an original or certified copy of the document proving the existence of such security interest; each document must be in compliance with stamps and registration taxes, if applicable.
7.8 Are there different types of security interest?
Security interests on trade marks must consist only of cash loans.
8.1 What are the grounds for revocation of a trade mark?
A trade mark may be revoked:
- due to its genericisation: i.e. it has become a generic denomination of a product in the market or if it has lost its distinctive character;
- if it becomes unlawful; or
- due to its non-use, i.e. if the owner of the trade mark did not make actual use of it within five years from the registration date or if the owner suspends such use for a continuous period of five years, unless such suspension is justified by a legitimate reason.
8.2 What is the procedure for revocation of a trade mark?
It is compulsory to file a revocation claim before the competent Court of the address of service chosen by the applicant at the date of filing and as showed in the filing receipt and in the Trademark Bulletin.
8.3 Who can commence revocation proceedings?
The revocation of a trade mark may be requested by whoever has an interest in doing so or brought directly by the Public Prosecutor.
8.4 What grounds of defence can be raised to a revocation action?
The defendant might prove that, between the expiration of the five-year period of non-use and the filing of the claim of revocation, it has resumed actual use of its trade mark. However, if the owner of the trade mark makes preparations for starting to use the trade mark after learning that a revocation claim was filed, then such use or resumption of use will be taken into consideration and considered valid only if it was started at least three months prior to the filing of the revocation claim.
8.5 What is the route of appeal from a decision of revocation?
The appeal shall be filed before the Court of Appeal of the belonging district of the first instance Court. The appellate decision may be further appealed to the Supreme Court, but only on the basis of a misapplication of substantive or procedural law. The Supreme Court cannot normally adjudicate on the facts of a case, and may do so only in exceptional circumstances (i.e. where the facts will not be investigated further).
9.1 What are the grounds for invalidity of a trade mark?
A trade mark shall be considered null in the case that it does not meet the requirements set forth under question 2.2 or in the case that the trade mark is filed in bad faith.
9.2 What is the procedure for invalidation of a trade mark?
It is compulsory to file an invalidation claim before the competent Court of the address of service chosen by the applicant at the date of filing, as shown in the filing receipt and in the Trademark Bulletin.
9.3 Who can commence invalidation proceedings?
The invalidation proceedings may be commenced by whoever has an interest in doing so, or brought directly by the Public Prosecutor. However, for those actions aimed at obtaining invalidity of a trade mark due to the existence of earlier rights or because the use of the trade mark is claimed to constitute an infringement of another's copyright, industrial property right or other exclusive rights of third parties, or because the trade mark infringes the right to the name or image because the registration was made in the name of a non-entitled person, only the owner of such rights is entitled to commence invalidation proceedings.
9.4 What grounds of defence can be raised to an invalidation action?
In the event of an invalidation action based on absolute grounds, such as lack of distinctive character, the defendant might prove a secondary meaning of the trade mark. Moreover, in the event of invalidation actions of trade marks consisting in names or pictures of people due to the lack of documentation proving consent to file the application, the defendant might demonstrate the acquisition of such consent.
As regards invalidation actions based on relative grounds, the defendant might challenge the validity of the prior trade mark/distinctive sign.
9.5 What is the route of appeal from a decision of invalidity?
See question 8.5 above.
10. Trade Mark Enforcement
10.1 How and before what tribunals can a trade mark be enforced against an infringer?
Trade mark infringement claims have to be raised before the Italian Courts that have a specialised division known as a "Tribunal of Enterprises". The Tribunals are organised on a territorial basis and only the most important cities host a Tribunal of Enterprises. There are 22 Tribunals of Enterprises in Italy today. The general rule is that an infringer may be sued before the Court of the district in which it has its place of business or before the Court of the district of the locus commissi delicti, i.e. the place where the conduct has allegedly been committed. Please note that, in the event that one of the parties of the judicial proceedings has its registered office in a foreign country, only 11 Tribunals of Enterprises, out of the above-mentioned 22, will have jurisdiction on the matter.
10.2 What are the key pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?
There are no compulsory pre-trial procedural stages in Italy in relation to trade mark infringement. Particularly in the event of urgent proceedings, the parties only face each other in Court and before the judge. Sometimes, before commencing proceedings on the merits and only if specific circumstances are met, it might be advisable to send a cease-and-desist letter to the counterparty before filing a complaint before the Court.
10.3 Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?
As regards preliminary injunctions, please note that there are three different preliminary measures under Italian law; namely description, seizure and injunction. All such measures require specific conditions in order to be granted:
1. Fumus boni juris, i.e. the need to show that, on the balance of probabilities, the trade mark or patent is valid and infringed. There is no need to furnish full evidence, but it is sufficient to show an acceptable likelihood of a good case.
2. Periculum in mora, i.e. the urgency to obtain a remedy to the infringement. It is necessary to demonstrate that the delay incurred in ordinary litigation would generate an irrecoverable loss.
The judge might require the applicant to post a security for guarantee of possible damages while granting the order. However, such measure is only seldom granted. If the plaintiff does not comply therewith, the order will not take effect. The Court can also grant a description or a seizure if there is a high possibility of infringement and unlawful conduct by the counterparty. The other requirement is the impossibility to obtain evidence of the infringement in another way. Please note that preliminary injunctions are often granted by Italian Courts.
Injunctions can become final and permanent at the end of judicial proceedings by means of the decision of the judge, and only in the event of proceedings on the merits.
10.4 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?
There is no discovery or disclosure, as per the common-law principles in Italy. However, the Enforcement Directive n. 2004/48/EC, implemented in Italy through Legislative Decree n. 140/2006, introduced new provisions on the matter in the Italian Code of Industrial Property. According to these rules, the Courts are entitled to require information relating to: (i) persons involved in the production or distribution of counterfeited goods, from the counterparty; and (ii) infringing goods, origin, distribution networks and services, from the infringer, any person found to be in possession of counterfeit goods or using or providing services infringing an IP right, and any person indicated by such individuals as being involved in the production or distribution of counterfeited goods. This information may comprise the name and address of producers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers, the quantities produced, and the price obtained for the goods or services in question.
Therefore, if the claimant does not know the persons involved in the infringement activity, he can ask the Court to obtain information, through the counterparty or third parties, concerning the persons and the infringing goods.
The judge examines the grounds of the request and, if there are not sufficient elements about the involvement of the person indicated, he does not grant the order.
The order will also not be granted if the judge determines that it is excessive or burdensome.
Moreover, the judge may – at the request of an interested party – order the opponent or a third party to produce a specific document. However, there must be sufficient evidence that such document exists, and the requesting party must also demonstrate why its acquisition is relevant to the facts of the case – an order to produce documents will not be granted if the aim is to "fish" for evidence.
10.5 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?
Evidence may be submitted either orally or in writing; indeed, the Italian Civil Code allows documentary evidence, oral evidence, acknowledgment, oath and confession. Please note that cross-examination is not allowed, as it is in common-law systems. Please note that a party may examine the other party's witness; however, they have to submit to the judge the questions that they are willing to ask the witness, and must have the judge's approval to do so. Please also note that in the Italian jurisdiction the witness exam is performed only by the judge, who asks the witnesses the questions previously outlined by the parties and allowed by the judge.
10.6 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?
The so-called "necessary suspension" might be applied in the event that further proceedings between the same parties are pending and, in such proceedings, an invalidity or inexistence claim is raised. However, please note that suspension is only seldom granted by Italian judges.
10.7 After what period is a claim for trade mark infringement time-barred?
An invalidity claim may be filed as long as acquiescence does not intervene: in other words, the owner of an allegedly infringed trade mark may not raise claims for infringement if he/she tolerated the use of the infringing trade mark for five consecutive years starting from the date he/she acknowledged the infringement. If the counterfeit activity persists for several years, then the plaintiff keeps his interest in filing counterfeit claim as long as the counterfeit activity lasts.
10.8 Are there criminal liabilities for trade mark infringement?
Yes. Criminal proceedings may be commenced but criminal Courts do not have specialised divisions.
10.9 If so, who can pursue a criminal prosecution?
The criminal proceedings regarding trade mark counterfeiting can be pursued by the owner of the counterfeit trade mark and by the public prosecutor (due to the fact that there are collective interests involved) against the manufacturer and distributor of the counterfeit products/services.
10.10 What, if any, are the provisions for unauthorised threats of trade mark infringement?
The are no provisions under Italian law regarding unauthorised threats of trade mark infringement. However, the case law states that sending an ungrounded cease-and-desist letter might constitute unfair competition by means of art. 2598 n. 2 of the Italian Civil Code.
11. Defences to Infringement
11.1 What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?
First of all, the defendant might claim the lack of likelihood of confusion between the signs or challenge the validity of the earlier trade mark.
11.2 What grounds of defence can be raised in addition to non-infringement?
The defendant might, within the same proceedings, file a counterclaim of invalidity of the plaintiff's trade mark.
12.1 What remedies are available for trade mark infringement?
In the event of trade mark infringement, the following remedies are available:
1. injunction order against the manufacture, sale and use of the goods that infringe the trade mark right;
2. recall order of the contested goods from the market;
3. penalties to be issued in the event of non-compliance with the above-mentioned orders or in the event of late compliance to such orders (for each day of delay);
4. the destruction, at the infringer's expense, of the contested goods. Please note that such remedy cannot be granted if it is detrimental to the national economy. In this case, the IP right-owner will only be entitled to claim compensation for damages;
5. the assignment of the ownership of the manufactured, imported or sold goods in violation of the trade mark right or the seizure, at the infringer's expense, of the items until the title elapses;
6. depending on the seriousness of the violation, the Court may also choose to issue a publishing order of all or part of the judgment; and
7. compensation for damages.
Please note that if the infringing products, following a modification, can be used lawfully, the Court can order only a temporary recall from commerce, with the possibility to reintroduce them on the market after the modification. Personal items or those used within the household, which are pertinent to the infringement, are not to be removed.
When making its decision, the Court is required to pay particular attention to proportionality between the infringement, sanctions and third-party interests.
Please note that the above-mentioned remedies are often granted by the Courts, including in interim proceedings.
12.2 Are costs recoverable from the losing party and, if so, how are they determined and what proportion of the costs can usually be recovered?
The leading principle of judicial cost-splitting is the so-called "unsuccessful principle": the losing party shall usually bear all the legal expenses both of the judgment and of the counterparty, in the amount determined by the judge.
13.1 What is the right of appeal from a first instance judgment and is it only on a point of law?
The first instance judgment may be appealed to the Court of Appeals. Appeals which are reasonably expected to be rejected at the end of the proceedings are judged inadmissible in the first hearings by the competent Courts. On the contrary, if they are judged admissible, they are decided on the basis of the rules set out for the ordinary proceedings. Evidence may be taken only in exceptional circumstances. An appellate decision may be further appealed to the Supreme Court, but only on the basis of a misapplication of substantive or procedural law. The Supreme Court cannot normally adjudicate on the facts of a case, and may do so only in exceptional circumstances (i.e. where the facts will not be investigated further).
13.2 In what circumstances can new evidence be added at the appeal stage?
New evidence may not be added at the appeal stage, unless the party that is willing to add it might prove that he was not able to file it in the first instance proceedings for reasons that were beyond his control.
14. Border Control Measures
14.1 Is there a mechanism for seizing or preventing the importation of infringing goods or services and, if so, how quickly are such measures resolved?
The owner of a trade mark can prevent the importation of infringing goods or services by filing a request to the Customs Agency specifying which trade mark shall be subject to surveillance. In the event that the Customs Agency finds some allegedly counterfeit products, it will inform the owner of the trade mark, who will have 10 days to inform the Customs Agency if the products imported are original or counterfeit. In the latter case, the Customs Agency will seize the goods and criminal proceedings against the company importing the product will be started. Please note that the owner of the trade mark is entitled to know where the products were coming from and to whom they were delivered.
15. Other Related Rights
15.1 To what extent are unregistered trade mark rights enforceable in your jurisdiction?
Under Italian law and case law, a de facto trade mark is assimilated into a registered trade mark only if it has an overall reputation in the country, the use of the trade mark is widespread at national level and not only at local level and, of course, if the non-registered sign is used as a trade mark. However, please note that the owner of a de facto trade mark is not entitled to file oppositions and has a substantial burden of proof in order to enforce the non-registered trade mark.
15.2 To what extent does a company name offer protection from use by a third party?
Please note that Italian law states the principle of Unity of Distinctive Signs, under which there is unity among all the distinctive signs that are used in business activity, such as company names and domain names. According to such principle, the company name shall be considered a non-registered distinctive sign; therefore, if the business name has an overall reputation in the country and is used by a third party only in order to obtain an undue advantage from the distinctive character of such sign or its reputation, then such use is not allowed. However, please note that using a personal name in the company name is allowed and may not be prohibited if such use is not contrary to the principles of fair business.
15.3 Are there any other rights that confer IP protection, for instance book title and film title rights?
Book titles and film titles are considered distinctive signs and may be protected as trade marks if they meet the requirements of validity of trade marks. Please also note that book or movie characters may be registered as 3D trade marks. Moreover, copyright legislation offers protection for all the creative works and products that derive from people's intellect.
16. Domain Names
16.1 Who can own a domain name?
A domain name may be owned by a person or a company.
16.2 How is a domain name registered?
A domain name may be registered, after having checked its availability, by paying the registration fee to the registrar, who will request the renewal fee in a timely manner.
16.3 What protection does a domain name afford per se?
Under Italian law, domain names are considered distinctive signs as long as they are actually used for a commercial activity. This means that it might be enforced in the event that the use of trade marks or distinctive signs other than trade marks by third parties creates a likelihood of confusion as long as the domain name is used for a commercial purpose.
17. Current Developments
17.1 What have been the significant developments in relation to trade marks in the last year?
Please see question 17.2 below.
17.2 Please list three important judgments in the trade marks and brands sphere that have been issued within the last 18 months.
Court of Turin n. 1900/2017
The matter at issue refers to a typical and iconic Italian symbol: the Vespa motorbike. Two Chinese companies raised a claim before the Court of Turin requesting, among all the claims, the invalidity of the Vespa's Italian 3D trade mark, registered by Piaggio for the shape of the famous motorbike, due to the prior registered designs of the plaintiffs. The Court dismissed such claim and stated that the 3D trade mark corresponds to a prior design owned by Piaggio and registered prior to the plaintiffs' designs and purchased starting from 2005. Furthermore, the Court of Turin acknowledged the distinctive character of the 3D trade mark owned by Piaggio due to the peculiar and unique features of the Vespa, and also stated that the originality and the recognisability of the trade mark derive from the wide disseminations of Vespas in the Italian motorbike market.
Italian Supreme Court n. 9968/2017
The defendant in the case at issue claimed that since one of its competitors had allowed the use of an identical sign for the defendant's company name, this would have meant that he had also tolerated the use of an identical sign as a trade mark. As a consequence thereof, according to the defendant's claim, acquiescence intervened and the plaintiff had no right to challenge the use of a sign identical to the plaintiff's trade marks, as a trade mark.
The Supreme Court, however, dismissed such allegations and stated that tolerating the use of an identical sign as a company name does not mean accepting the use of such identical sign also as a trade mark, and that acquiescence would not operate in the latter case.
Italian Supreme Court n. 25198/2016
The Italian Supreme Court stated that secondary meaning does not always remove the weakness of a weak trade mark, even if such trade mark has acquired distinctive character.
The matter at issue referred to the trade mark "Clinique", which has become quite famous in the cosmetics field. According to the Supreme Court, the average consumer in Italy had become used to such word in the field of healthcare. For this reason, the trade mark "Clinique" was deemed weak and, even though it had acquired quite a reputation in Europe and Italy, this would leave unchanged the weak character of the trade mark. As a consequence thereof, the use of only slightly different trade marks in the field of cosmetics shall be allowed.
17.3 Are there any significant developments expected in the next year?
By 14 April 2019, Italy will have to transpose European Union Directive n. 2436/2015. It is therefore plausible that Certification marks will be introduced into the Italian system, or that the graphical representation requirement for filing trade marks will no longer apply.
17.4 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?
The entire judicial system is becoming more and more computerised and Internet-based. Indeed, starting from 2015, all writs, Court records and documents shall be filed electronically.
This seems to have sped up all the bureaucracy and has also been reflected in the pace of work and, consequently, in the length of proceedings.
Originally published in the 7th edition of the International Comparative Legal Guide to Trade Marks 2018.
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