Italy: Italy And The Trade Mark Directive

Last Updated: 18 January 1995
Italy managed to implement the European Community Directive 21/12/88 for the harmonisation of the substantive law of validity and infringement of trade marks within the time specified by the Directive - a fact worthy of note. With the entering into force of the Decreto Legge no. 480/92 on 31/12/92 many of the optional as well as the obligatory provisions of the Directive were included in the new legislation which modified or substituted many of the provisions of the preceding trade mark law of 1942.

Changing Role of a Trade Mark
Traditionally, a trade mark in Italy has distinguished a product or service as deriving from a particular source of production. However, one of the innovations to emerge from the legislation is the new role of the trade mark which, on the one hand, is a means of communicating a complex message and, on the other, has a value in itself as an asset. Two provisions that illustrate this point are, firstly, the fact that anyone (not only entrepreneurs) now has the opportunity to register a trade mark with the sole proviso that one merely intends to license its use to others.

Secondly, trade mark protection has been extended to cover all marks that are capable of graphic reproduction, including sounds, colours and colour-tones. Thus, the importance given to the creative aspects of a trade mark in relation to its capacity to promote the image of the business and the product is clearly demonstrated.

The concept of a trade mark as an asset is further strengthened by the removal of the old provision that prevented a trade mark from being assigned to anything other than a business and its enterprise or to a "ramo d'azienda" (a branch of a business). The new law also provides that the opportunity to assign a trade mark only arises in relation to a few products or services for which it has been registered.

"Renowned" Trade Marks
The autonomous importance of the trade mark is also re- inforced in those provisions which introduce the concept of the trade mark which enjoys "rinomanza", or national renown. This right is a consequence of the renown that a trade mark has acquired and, therefore, arises after the person who has acquired it has preserved it in such a way that its fame has become consolidated in the mind of the consumer. No definition for the concept of the "renowned" trade mark exists and so it is for the person who has an interest in so doing to establish that a trade mark has acquired "renown". Further protection is afforded to a "renowned" trade mark by the introduction of the right to prevent others from using a mark similar or identical to your own, even where the products or services relating to the other mark have no affinity with those for which the owner of the trade mark which enjoys renown has registered them. This applies in two situations: first when the unjustified use of that mark would give an undue advantage which derives from the distinctive character or the renown of the trade mark. By way of illustration, this might occur were a manufacturer of tennis shoes to apply the trade mark of a well-known energy drink such as "Gatorade" to his products. Secondly, the owner of a renowned trade mark is afforded protection when the use of another identical or similar mark could damage the distinctive character or renown of the original trade mark.

However, the concept of "renown" seems to be of less importance than that of the "marchio celebre", or celebrated trade mark such as, for example, "Marlboro", "Coca-cola", "Chanel", and "Ford" etc. Although a definition does not exist for renowned trade marks, they could be considered to enjoy a certain consolidated fame, without being world famous as such. For example, in Italy the trade marks of "Alemagna" (trade mark of a Milanese catering business), and of "Borsalino" (trade mark of an Italian company that produces and commercializes hats) could be considered renowned. It should be noted that the concept of a "renowned" trade mark may, however, present problems particularly during the period in which the mark is still acquiring or consolidating its fame and there is a risk of conflict with those who produce goods or services in a different class who may have, independently, registered an identical or similar trade mark. The new legislation provides that a mark which is deposited as a trade mark for a class of products or services at a time when the same trade mark already exists for a different class of products and services and which is renowned is void for lack of novelty.

Another notable change in respect of renowned marks is the fact that a series of signs, symbols, names and, specifically, names of people; signs used in artistic, literary, scientific, political or sporting fields; and the denominations, crests and emblems of organisations that do not have economic purposes, if well-known, can now only be registered as trade marks by those who have the right to them or by those who have obtained the consent of such person. Examples of this kind of sign or emblem are the five rings of the Olympic Games, the Rotary Club's wheel, and the two crossed-keys of St.Peter on the Vatican flag.

Geographic Expressions
The new law prohibits the registration of trade marks which are geographic expressions used as descriptive indications, or used to mislead the public as to the geographic origin of the product. Obviously, the use of a geographic expression in a purely fanciful way is not forbidden since such use is not intended to confuse or mislead consumers as to the geographic origin of the product. No consumer would believe, for example, that Laura Biagiotti's perfumes "Roma" and "Venezia" were produced in Rome and Venice respectively, nor that "Mont Blanc" pens were produced on the slopes of Europe's highest mountain.

Collective Trade Marks
Indications relating to geographic origin cannot be the object of registration as a trade mark unless the geographic origin of a product is the object of a collective trade mark. The owner of a collective trade mark is an organisation which must grant the use of a particular collective trade mark to any entrepreneurs who will then use that mark in addition to their own if their products can meet the quality requirements and if they possess the characteristics required by the constitution of that organisation. Any subject may now be the owner of a collective trade mark, not just an organisation, so that a physical person may become the owner of such a trade mark if he or she intends to guarantee the origin, the nature or the quality of specific products or services.However, the legislation provides that a collective trade mark will lapse if the owner of that trade mark does not exercise sufficient control over the maintenance of quality standards of the products or services in accordance with the provisions specified for the use of that kind of trade mark.

Lapse of Trade Marks
A trade mark will now lapse for lack of use after five years, instead of after three years as provided by the previous legislation. The right to a trade mark will also lapse if it has become the generic denomination of a product or service. This is known as "vulgarisation" of a trade mark and examples of this in Italy are "Premaman" for maternity clothing and "Frigidaire" for refrigerators.

Another provision worth mentioning, although not a novelty in Italy, is the concept of a trade mark that is partially void or lapsed in respect of certain products or services only. The concept of a trade mark that is partially void of partially lapsed allows the mark to survive in relation to products or services that are not afflicted by the conditions that would otherwise cause them to lapse or be void.

A trade mark will also lapse when the mark becomes capable of misleading the public as to the nature, the quality or the origin of products or services as a result of the way in which the trade mark is applied by its owner or by others with the owner's consent to the products or services for which it is registered. Further, a trade mark will lapse if its use becomes illegal, is contrary to public policy or public morality. Thus, the new legislation distinctly emphasises the correct use of trade marks.

Trade Marks and the Form of Products
The previous legislation did not permit the registration as trade marks of figures or marks whose distinctive character was inseparably connected with that of its utility and design. For example, prevailing case law recognised three- dimensional bottles which have a particular aesthetic value, separate from their utility and design, as valid trade marks. The new legislation has eliminated the difficult criterion of "separability" by introducing a provision that the form of a product or the form of the packaging of a product can be the object of a trade mark right. However, it should be stated that the form given to a product as a result of the nature of the product itself or as a result of its function cannot constitute a trade mark, but that in order to do so, the form must add "substantial value to the product".

Miscellaneous Provisions
Finally, it is worth noting that some changes have been made to the legislation regarding the procedure for the registration of a trade mark and the duties of the Italian Trade Mark office. Changes have been made to the rules governing publication of all matters concerning trade mark procedure and some of the terminology and even the name of the office with competence over trade mark matters has been changed - it will now be known as the Ufficio Italiano Brevetti e Marchi instead of the Ufficio Centrale Brevetti.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions