1 Legal framework
1.1 What is the statutory or other source of trademark rights?
National law: The primary source of trademark rights is:
- the Italian Code of Industrial Property (ICIP) (Legislative Decree 30/2005), as most recently amended by Legislative Decrees 34/2020 and 16/2020, converted into Law 31/2020; and
- its corresponding implementing regulation (Ministerial Decree 33/2010).
The ICIP includes the implementation of the provisions of the 1883 Paris Convention and harmonisation with EU trademark law.
References to trademarks can also be found in the Civil Code and the Criminal Code. The Civil Procedural Code also applies to trademark litigation, with the exception of certain provisions on remedies and sanctions which are set out in the ICIP.
Criminal prosecutions are governed by the Code of Criminal Procedure.
European law: The EU Trademark Regulation (2017/1001) and the corresponding EU Trademark Implementing Regulation (2018/626) both have application in Italy.
Additionally, Italy is a contracting party to:
- the Paris Convention for the Protection of Industrial Property (1883);
- the Madrid Agreement and Protocol Concerning the International Registration of Marks;
- the Nice Agreement on the International Classification of Goods and Services;
- the World Trademark Organisation Agreement on Trade-related Aspects of Intellectual Property Rights (1994); and
- the EU Customs Enforcement Regulation (608/2013).
1.2 How do trademark rights arise (ie, through use or registration)?
In Italy, trademark rights arise through registration. However, the use of a sign – if proved to be genuine and at the national level – may give rise to an unregistered trademark, which in certain circumstances will be protected by the ICIP as a valid IP right, as well as by the Civil Code against acts of unfair competition.
1.3 What is the statutory or other source of the trademark registration scheme?
The ICIP and its implementing regulation are the main sources of the trademark registration scheme in Italy.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
A registered trademark may consist of any sign – in particular, words (including personal names), images, letters, numbers, colours, the shape of a product or its packaging, sounds, motion, patterns and similar.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
Any designation or identifier that is capable of distinguishing the rights holder's goods or services from those of others, and that can be reproduced in the Trademark Register in a manner that makes it possible for the competent authority and the public to determine its scope of protection, may constitute a registered trademark.
Non-conventional trademarks – such as fragrances, smells, flavours, positions, shapes, sounds, colours and movements – may also be registered.
Moreover, according to Italian law, trademarks are eligible for registration if they meet the requirements of novelty, distinctiveness and lawfulness.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
Under Italian law, designations and identifiers that are non-distinctive, customary, descriptive, deceptive or contrary to law, public order or accepted principles of public morality are excluded from trademark registration. An examination as to whether a relevant designation or identifier fulfils the abovementioned criteria (examination on absolute grounds for refusal) is conducted by the Italian Patent and Trademark Office.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The Italian Patent and Trademark Office (UIBM).
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
Italy supports a multi-class application approach. The official fees are as follows:
- For an individual trademark:
- €101 for the first class; and
- €34 for each additional class.
- For a collective or certification mark:
- €337 independently of the number of classes;
- an additional representation fee of €34 for all kinds of trademarks.
Moreover, in the case of online filing, €42 is due as a virtual stamp fee; whereas in case of paper filing, a paper stamp fee of €16 is required for each four pages of both the filing form and all attachments thereto. Other duties are also payable to the local receiving office.
No additional mandatory fees are payable during prosecution or upon issuance of a registration certificate.
3.3 Does the trademark office use the Nice Classification scheme?
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
Class headings can be used as an indication of goods and services. However, pursuant to recent case law of the EU courts and the consequent harmonisation of Italian law, since 2013 class headings have been interpreted as covering only those goods and services that fall within the literal meaning of each term included in the class heading. Generic declarations that protection is sought for the entire list of goods and services are no longer accepted. Thus, if protection is sought for the entire class, a list of all goods or services contained in that class must be provided. In any event – and in particular, given that the UIBM has identified several class headings as being generic and too vague – it is highly recommended to provide a specific list of goods or services that meets the necessary requirements of precision and clarity in order to avoid the risk of objection or refusal.
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
No, the applicant need not show bona fide in order to apply for registration. The Italian system operates on a ‘first come, first served' basis. Italian law provides that a sign can be registered by those who use it or propose to use it in the manufacture or trade of goods, or in the provision of services – either directly through their own undertaking or through controlled undertakings, or by others with their consent. It is thus possible to file a trademark application before having started to use the mark. However, the trademark must be put to genuine use within five years of the registration date and use cannot be interrupted for a continuous period of five years.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
No, the UIBM only conducts an examination for absolute grounds for refusal – that is, it will check for:
- deceptiveness; and
- whether the sign is contrary to law, public order or accepted principles of public morality.
The UIBM does not conduct an examination on relative grounds for refusal (ie, the existence of prior rights).
3.7 What types of examinations does the trademark office perform other than relative examination?
In addition to checking all formal requirements (eg, payment of fees, payment of stamp fees and correct completion and filing of the forms) relating to a trademark application, the UIBM will perform an examination for absolute grounds for refusal – that is, it will check for:
- deceptiveness; and
- whether the sign is contrary to law, public order or accepted principles of public morality.
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
Marks will not be registered if they:
- may cause confusion with a senior mark;
- are descriptive; or
- are generic.
In addition, the following will not be registered as trademarks:
- signs that are contrary to the law, public order or accepted principles of public morality;
- signs that would mislead the public, in particular as to the geographical origin, nature or quality of the goods or services, or to the type of trademark;
- signs whose use would represent an infringement of a third party's copyright, industrial property rights or other exclusive rights;
- designations of origin, geographical indications, traditional terms for wine or traditional specialities protected by national or EU legislation, or by international agreements to which Italy or the European Union is a party;
- signs that contain or essentially reproduce earlier registered plant variety denominations;
- signs that include the portraits of third parties without authorisation;
- the personal names of third parties, if the use of such name would be detrimental to the reputation, image or creditworthiness of the legitimate rights holder;
- well-known signs – that is, the names of known persons ,signs used in the fields of art, literature, science, politics or sport, designations and acronyms of events and those of non-lucrative entities and associations, including the relevant emblems, without the authorisation of the legitimate rights holder;
- signs that consist exclusively of:
- a shape or other feature that results from the nature of the goods themselves;
- a shape or other feature of the goods which is necessary to obtain a technical result; or
- a shape or other feature which gives substantial value to the goods; and
- coats of arms and other symbols of public interest, as well as signs that are detrimental to the image or reputation of Italy.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
No. Interested parties may file observations after publication of the application, but no specific deadline is set for doing so (the previous two-month period from the date of publication was removed by one of the amendments to the Italian Code of Industrial Property subsequent to its entry into force). If the UIBM considers that the observations are relevant, these will be notified to the applicant, which is entitled to reply within 30 days of notification of those observations.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
No, Italy does not require pre-registration evidence of use. However:
- within five years of registration, the mark must be put to genuine use in the course of trade in relation to the goods and services claimed; and
- use cannot be interrupted for a continuous period of five years.
3.12 How much time does it typically take from filing an application to the first office action?
Usually three to four months. However, in recent times the UIBM has sped up its procedures and an office action, if any, will be issued in less than two months.
3.13 How much time does it typically take from filing an application to publication?
Typically, around four months; however, in recent times the UIBM has sped up its procedures and publication now occurs approximately two or three months after application.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
Yes, a registration refusal may be appealed before the Italian Patent and Trademark Office (UIBM) within 60 days.
4.2 What is the procedure for appealing a trademark office refusal?
Within 60 days of the refusal decision issued by the UIBM, the applicant may lodge an appeal before the Board of Appeal of the IPTO. If there are no formal deficiencies concerning payment of the appeal fee or completion of submission of the form, the chairman of the Board of Appeal will send the case to the competent section. A term of up to 60 days will then be set in which to file all writs and evidence before the Board of Appeal. An oral hearing may also be allowed. The board has the power to request clarification and documents from the UIBM. If the Board of Appeal finds that the appeal is inadmissible, it will issue a decision to this effect. If it finds that the appeal is groundless, it will issue a decision to this effect. If it grants the appeal, it will cancel the UIBM's decision in full or in part and take the necessary measures.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
According to Article 136-terdecies of the Italian Code of Industrial Property, decisions of the Board of Appeal can be challenged before the Supreme Court:
- within 60 days of notification of the decision, if the appellant invokes one of the grounds set out in Article 360, paragraphs 1 to 5 of the Code of Civil Procedure, particularly on the following basis:
- jurisdiction-related grounds;
- points of law (violation or false application of provisions of law or of contracts or collective work agreements);
- invalidity of the decision or proceedings; or
- failure to examine a decisive fact to the proceedings which was the subject of discussion between the parties; or
- within 30 days of notification of the decision, by means of an appeal for revocation, if the appellant invokes one of the grounds set out in Article 395 of the Code of Civil Procedure, such as:
- wilful misconduct of one of the parties;
- false evidence;
- force majeure; or
- factual error.
5.1 Can a third party oppose a trademark application?
Yes, an opposition can be filed with the Italian Patent and Trademark Office (UIBM), within three months of publication of the trademark application, by:
- the owner/applicant of an earlier registered/filed trademark;
- the exclusive licensee of an earlier registered/filed trademark;
- the holder of a designation of origin or geographic indication; and
- the legitimate rights holder of a portrait, name or well-known sign (see question 3.8).
5.2 Who has standing to oppose a trademark application?
The following persons have standing to file an opposition:
- the applicant/owner (or exclusive licensee) of an application/registration filed earlier or with effect from an earlier date by virtue of a right of priority or a valid claim of seniority, in case of:
- an identical trademark in relation to identical goods or services;
- an identical or similar trademark in relation to identical or similar goods or services if, due to the identity or similarity between the signs and the identity or affinity between the goods or services, there may be a likelihood of confusion for the public, which may also consist in a likelihood of association between the two signs; or
- an identical or similar trademark in relation to identical, similar or non-similar goods or services, where the earlier trademark has a reputation in the European Union or in Italy and where the use of the subsequent sign without due cause would unduly take advantage of the distinctive character or reputation of the earlier sign or be detrimental to it; this is also applicable where the earlier trademark is well known pursuant to the Paris Convention for the Protection of Intellectual Property;
- a person, entity or association that is the legitimate rights holder of a portrait, name or well-known sign (see question 3.8); and
- the right holder of a designation of origin or geographical indication, recognised on the basis of Italian or European legislation or in accordance with international agreements to which the European Union or Italy is a party.
It is thus not possible to file an opposition invoking rights deriving from:
- the de facto use of the trademark (unregistered trademark); or
- the use of a trade name, company name or domain name.
5.3 What is the timeframe for opposing a trademark application?
Oppositions against Italian trademark applications must be filed within three months of publication of the application in the Official Bulletin of Trademarks. This period cannot be extended. Oppositions against Italian designations of international registrations must be filed within three months of the first day of the month following that in which registration of the international application is published in the World Intellectual Property Organisation Gazette of International Marks. This period cannot be extended
5.4 Which body hears oppositions?
Trademark opposition matters are handled and heard by the UIBM.
5.5 What is the process by which an opposition proceeds?
An opposition notice must be submitted to the UIBM in writing within three months of the publication date, together with an indication of the relevant grounds and payment of the applicable official fees.
Upon admission of the opposition by the UIBM, within two months of the expiry of the opposition term, the UIBM will inform both parties of the filed opposition and give them a two-month cooling-off period in which they may reach an amicable settlement, extendable at the joint request of the parties by up to 12 months from the date of receipt of the first communication. If an agreement is reached within this period, the parties must inform the UIBM. Otherwise, the opposition enters the adversarial stage. Within two months of the expiry of the cooling-off period, the opponent may file additional supporting documents or arguments, which the UIBM will forward to the applicant, setting a term for filing its observations. Within this term, the applicant may also request the opponent to submit proof of effective use of the enforced earlier trademark, if registered more than five years before the filing date of the contested application. Evidence of effective use must be filed within 60 days of the relevant notification (this term may be extended up to six months).
At the end of the adversarial stage, the UIBM will decide on the opposition, either refusing the contested application (in full or in part) or rejecting the opposition and awarding costs to the winning party (which may consist of the opposition fee of €250 and up to €300 of professional fees).
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
The opposition decision may be appealed before the UIBM Board of Appeal within 60 days of receipt of the opposition decision.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
The Italian Code of Industrial Property recognises "signs already known as marks" as valid IP rights which may bar the registration and use of subsequent trademarks. As a general rule, unregistered trademarks enjoy similar protection to registered trademarks. However, the following should be taken into account:
- Unregistered marks do not benefit from the presumption of validity; the burden of proof in civil proceedings is therefore higher than in the case of registered trademarks.
- Unregistered marks cannot form the basis of an opposition and can be enforced against subsequent registration only by means of civil action.
- The prior use of a sign which results in the sign becoming locally well known only does not exclude the novelty of a subsequent trademark.
- Locally well-known unregistered trademarks may still be used locally, regardless of the subsequent registration by a third party of an identical or similar trademark for identical or similar goods and services. However, this prior use does not affect the novelty and validity of the subsequent third-party registration.
6.2 What legal rights are conferred by a trademark registration?
A trademark confers on the holder the right to prohibit the use, commercialisation and registration of confusingly similar marks by third parties.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
The trademark owner may seek:
- preliminary injunctions (eg, seizure, description);
- reasonable compensation for the unauthorised use of the trademark and compensation for any additional damages caused by the infringement, provided that the infringement was committed with negligence or intent;
- withdrawal and/or destruction/assignment of the infringing products;
- withdrawal or rejection of the infringing trademark application;
- cancellation or revocation of the infringing trademark registration;
- a court judgment attesting to the infringement;
- publication of the court judgment;
- potential criminal charges (if applicable); and
- reimbursement of litigation costs.
Punitive damages are not allowed under Italian law.
7.2 What remedies are available against trademark dilution?
The remedies are the same as those set out in question 7.1 if the trademark has already been registered; otherwise, if still pending, an opposition can be filed with the Italian Patent and Trademark Office within the corresponding timeframe.
For the sake of completeness, in Italy, dilution includes blurring and tarnishment.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
Yes, and against unfair competition.
7.4 What is the procedure for pursuing claims for trademark infringement?
In Italy, trademark infringement procedures may be brought by the trademark owner (ie, the original owner or an assignee). An exclusive licensee can proceed only with the authorisation of trademark owner or in case of failure to act on its part (unless the licence agreement provides otherwise). Non-exclusive licensees must bring the infringement action jointly with the trademark owner. Distributors may not bring infringement actions.
Trademark infringement actions can be filed before the specialised IP divisions of the civil courts and are the most common remedy exercised by trademark owners. Injunctions can be filed if urgency (periculum in mora) and a (prima facie) likelihood of success on the merits of the case (fumus boni iuris) are found, in order to prevent infringing practices and allow for seizure of the infringing goods.
A criminal claim can also be pursued; however, the trademark owner is considered not as a party to the case, but as the injured party, and hence has limited scope of action.
Infringement and invalidity actions can be brought simultaneously before the same court and within the same proceedings, with the exception of EU cancellation procedures, which are heard by the EU Intellectual Property Office.
Infringement proceedings usually take two to three years before the Italian courts.
7.5 What typical defences are available to a defendant in trademark litigation?
The available defences under Italian law are as follows:
- absence of likelihood of confusion;
- weakness of the counterparty's sign;
- absence of reputation and/or of acquired distinctiveness through use enjoyed by the plaintiff, if claimed;
- existence of a de facto (unregistered) trademark;
- tolerance of the presence of the trademark in the market for at least five years;
- use of the designation or identifier in a descriptive way and not as a trademark;
- use of the trademark in a legitimate way to inform customers that products under this trademark are being sold;
- lapse of the right of the trademark owner to seek a cease and desist order or no urgent need for a court decision (but only in preliminary injunction proceedings);
- right of the defendant to use the mark;
- a court judgment being sought attesting to the non-existence of infringement; or
- counterclaims concerning the validity of the mark.
7.6 What is the procedure for appealing a decision in trademark litigation?
Decisions of a first-instance court may be appealed before the specialised IP division of the competent court of appeal within 30 days of notification/service of the decision on the parties. Appeal decisions may be challenged through a cassation petition before the Supreme Court on points of law only.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
The term of protection is 10 years from the date of application. A trademark registration may be renewed for further 10-year periods from the expiry of the registration period.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
The renewal of a trademark application is subject solely to payment of the corresponding official fee.
8.3 What are the grounds for cancelling a trademark registration?
A trademark registration may be cancelled, which may lead to revocation or invalidity.
The grounds for revocation are as follows:
- The trademark has become generic;
- The trademark has become contrary to the law, public order or accepted principles of morality;
- The trademark has become likely to mislead the public, especially regarding the nature, quality or geographical origin of the goods or services;
- The trademark has not been genuinely used for a period of five years since registration or use has been interrupted for a continuous period of five years without proper reasons for non-use; or
- In case of a collective or certification trademark, the owner has not taken reasonable steps to prevent the collective or certification trademark from being used in a manner that is incompatible with the corresponding regulations of use.
The grounds for invalidity are as follows:
- The trademark infringes third-party rights;
- One of the requirements set out in question 3.8 is not met;
- The application was filed in bad faith; or
- The application was filed by a person other than the entitled party.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
The Italian Patent and Trademark Office (UIBM) is not entitled to cancel a registration on its own initiative.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
Trademark cancellation procedures (both revocation and invalidity) are currently heard by the civil courts. However, due to the implementation of the EU Trademark Directive (2015/2436), the Italian Code of Industrial Property was amended with effect from 23 March 2019. One of the most revolutionary amendments concerns the possibility to bring revocation and invalidity actions before the UIBM, in addition to the Italian civil courts.
However, although the relevant provisions are now in force, trademarks owners must wait until a specific implementation decree has been issued in order to access this new procedure. The final deadline for the issue thereof is 2023. The new system will allow for actions to be brought before either the UIBM or the civil courts.
8.6 What is the procedure for appealing a decision cancelling a registration?
Cancellation decisions can be appealed before the specialised civil courts of appeal.
However, once the new regime allowing revocation and invalidity actions to be heard by the UIBM enters into force (see question 8.5), decisions on revocation and invalidity taken by the UIBM will be appealed to the Board of Appeal of the UIBM.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
No, quality control clauses are not mandatory; however, they are highly recommended in order to avoid the risks outlined in question 9.3.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
While not mandatory, licences can be recorded before the Italian Patent and Trademark Office.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
Although quality control clauses are not compulsory in Italy, failure to undertake proper quality control maintenance may have negative consequences for the trademark owner, which may ultimately lead to the loss of rights to the trademark. For example, the Italian Code of Industrial Property expressly provides that no deception should arise as a result of a trademark licence with respect to those features of the goods or services that are essential for the customer's appreciation. If this occurs, it may lead to a revocation action due to:
- misleading use of a mark; or
- failure to take reasonable steps to prevent a collective or certification trademark from being used in a manner that is incompatible with the corresponding regulations of use.
Further potential issues may arise in case of non-use of the trademark, alteration of its distinctive character, or failure to enforce the trademark, which may lead to dilution or vulgarisation, or to the term becoming customary.
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
Foreign trademarks that have not been registered in Italy may be enforced in Italy to the extent that:
- they are notorious marks (ie, well-known marks that enjoy a reputation in Italy);
- they were used in Italy prior to a trademark application filed in Italy in bad faith;
- they were used in Italy prior to a trademark that is used contrary to morality; or
- an act of unfair competition was carried out.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
Yes, Italy is a contracting party to the Madrid Union.
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.