Introduction to Italy Trademark Registration System
Ufficio Italiano Brevetti e Marchi (UIBM)
Joined International Treaties for Trade Marks
Paris Convention; Madrid Agreement; Madrid Protocol; Singapore Treaty; Trademark Law Treaty
Principle on Trade Mark Protection
Italy adopts "first-to-file" for trademark protection, and the Industrial Property Code of Italy protects both the registered trademarks and un-registered marks.
If a registered trademark is used by someone else without authorization and/or license, the trademark owner can simply take an infringement action.
Un-registered mark is entitled to challenge the later registration of an identical or similar mark for identical or similar goods or services if there exists a likelihood of confusion or association for the relevant public. Protection against infringement of an unregistered trademark can rely on both unfair competition rules of the Civil Code) and procedural enforcement rules of the Industrial Property Code.
Kinds of Registrable Trade Marks
In Italy, the term “trade mark” includes word mark, device mark, shape mark, color mark, their combination, and non-conventional trademarks, such as smell mark, sound mark, color per se mark, hologram mark and movement mark.
In addition, there are special trademarks are enacted and protected, such as “collective mark”.
Required Information and Documents
1. Applicant’s name, address, nationality / company’s registered country;
2. Specimen of the mark to be applied;
3. List of goods/services to be applied, and the class(es);
4. Translation & transliteration of foreign language in the mark;
5. A simply signed Power of Attorney; and
6. Priority document, if any.
Timeframe and Procedure for Application
If an application goes smoothly, the whole registration procedure takes about 12-14 months.
A trademark application in Italy usually takes around 6-10 month for examination, if there is no any refusal, it will then publish for 3 month for opposition purpose. If no opposition is filed, a registration certificate will be issued within 1-2 months after the end of publication.
Duration and Renewal of Registration
A trade mark registration in Italy is valid for 10 years from the date of application, which can be renewed every 10 years, from 6 months before the renewal due date or up to 6 months after the date expires.
Cancellation System
If a registered trademark has not been actual used in Italy by the owner or with his consent, in relation to the goods or services for which it is registered, for a continuous period of at least 5 years, and there are no valid reasons for non-use, any third party can apply for revocation to cancel/remove the registration.
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