Introduction
Contrary to popular belief, registering a trademark in Italy is not expensive. I was working with a client, let’s call her Sofia, last summer. Sofia’s marriage had many rough patches, and she wanted to leave. At the same time, she started a new company, the name of which she wanted to trademark.
She planned to act depressed for a while, waiting for her husband to serve her with divorce papers first. After asking a series of questions, I discovered that she thought the cost of trademarking a name in Italy was so high that she would need the alimony from her divorce to offset it.
Cost of Trademarking a Name in Italy
The cost of registering trademarks in Italy depends largely on the class or classes in which the trademark will be registered. The fee for filing a trademark application for a single class of goods and services is €380 (+ government fees). The government fee is €192 for the trademark registration in one class of goods/services. For each additional class of goods included in a multi-class trademark application, you will pay €79. This fee must be paid before you submit your documents.
Most marks require 1 to 3 classes of protection. However, getting protection in all classes 1 to 45 of the Nice classification is also possible.
Once registered, the trademark shall be in force for 10 years. During the trademark evaluation by the Italian Trademark Office, objections are responded to free of charge. Otherwise, if a previously registered trademark owner has filed the opposition, an office action fee is expected to be paid if you wish for an attorney to draft a response on your behalf. The cost for the office action is between €400 to €800, depending on the extent of complexity of the response required.
Normally, it takes 10-15 months to finalise your trademark registration. During the pendency of the registration application, you are only allowed to apply for a trademark symbol beside the mark.
Documents required for the filing of a trademark application in Italy
The following documents are required to be submitted at the time of filing your trademark application:
- Full name and address of the applicant
- Description of goods or services to be trademarked
- If it is a design mark, then a computerised JPG, GIF, PNG, or BMP image file would be the best suitable.
- If a priority is claimed under the Paris Convention, then the priority data (i.e., the number of the foreign application, filing date, and country of origin) must be quoted in the application.
- A Power of Attorney (POA) granted by the applicant. POA doesn’t require any legalisation or notarisation.
Italy Trademark Application Procedure
Considering that trademarks should ideally be filed through a lawyer to avoid any issues in the future, the following application is followed to trademark your application in Italy:
- Your lawyer acknowledges the information related to your trademark, such as specimens of the mark, the goods/services and registration details, along with providing you with a quotation, preliminary advice, along with the classification of your goods/services.
- The lawyer then conducts a pre-filing search for you and sends you a search report to confirm if any similar trademark already exists in the Trademark database. Depending on the pre–filing search, the applicant decides whether to go ahead with the trademark or not.
- The lawyer files a trademark application to the Italian Patent and Trademark Office.
- The Italian Patent and Trademark Office conducts a search of trademark records to see if any similar or same trademark has already been registered or applied for by any trader in the same or similar class. Further, they check whether the trademark registration requirements have been satisfied, as laid down in the Industrial Property Code. If the registration requirements have not been met, the Examiner shall object to the mark.
- Once the trademark has been accepted for registration, it shall be published in the Monthly Bulletin. Here, third parties shall be given a three-month opposition period if they wish to file any opposition against the trademark registration.
- If no third-party objection has been received, the Italian Patent and Trademark Office shall issue a registration certificate.
Why and how to register a Trademark in Italy?
It is possible to register your trademark either locally by the Italian Patent and Trademark Office (also called Ufficio Italiano Brevetti e Marchi – UIBM) or regionally through filing an application in European Union Trademarks (EUTM), through which we can get protection over the trademark in the whole European Union.
Further, Italy is a member state of the Madrid Protocol. Hence, it is possible for the trademark to automatically get registered in Italy, if it has been registered under the Madrid System.
While it is not mandatory for a trademark to be registered in Italy since the country also recognises an extensive prior use of the trademark, however, trademark registration is recommended since it helps in granting the presumption of ownership and helps enforce the trademark through law.
While it is not necessary for the trademark to be in use during the registration process; however, if the trademark is not in use within a period of 5 years after the registration, it may be cancelled for non-use.
Trademarks are registered for 10 years, after which it is possible to renew them further for successive 10-year periods. It is possible to request renewal during the 12 months preceding the expiration date of the trademark registration or 6 months after the expiry. The latter is subject to payment of an additional fee.
Restrictions on Trademarks in Italy & Around the World
Trademarking a name in Italy might be your primary focus, but expanding your protection to international markets can be a strategic move, for example, establishing a presence in the US through trademark protection can provide immense advantages. Trademarks can be declared invalid if they fall short of certain requirements. As a general rule, a trademark must not be descriptive or violate public policy. Any trademark that flouts this rule is bound to be opposed either during or after its registration. Let’s take a look at the aspects of the rule in detail.
The trademark Must Not be Descriptive
A descriptive trademark describes the goods or services of the company and gives it a name. For example, if Gianni Marco is a trademark of Gianni-Marco Motor Company, it is not a descriptive trademark because it does not describe the goods or services, but rather the automobile manufacturer.
The Trademark Must Not Violate Public Policy
A classic example is the case of La Mafia v. EUIPO. In 2006, La Mafia applied for the registration of its trademark, “La Mafia se sienta à la mesa,” which means “take a seat at the table.” The mark was successfully registered. But in 2015, the Italian Republic opposed the mark, claiming that the word “mafia” in the mark made a casual reference to a criminal organisation. Allowing such a mark to be used was unsafe for the food industry and society.
Unfortunately for La Mafia, the EUIPO (European Union Intellectual Property Office) Cancellation Division, the First Board of Appeal and the General Court ruled in favour of the Italian Republic.
Conclusion
The Italian government is trying to make it easier for businesses to trademark their names, but there are some limitations on what can be trademarked. As always, I recommend seeking advice from an attorney before taking any action with respect to trademarking your name in Italy. LegaMart can help you with the entire trademark application process in Italy, along with providing you with some figurative and design elements of your trademark, through our experienced lawyers.
Frequently Asked Questions (FAQs)
What is a Trademark?
As per Article 7 of the Italian Industrial Property Code (IPC), all graphically representable signs, such as words (including personal names), drawings, letters, numbers, sounds, the shape of a product or its package, combinations or chromatic tones, may be subject to registration as a company trademark, provided they are able to distinguish the goods or services of one company from those of other companies.
How Long Does the Process of Trademarking a Name Take?
Assuming there are no delays due to opposition to the trademark application and late payment of filing fees, the trademark application and registration process in Italy spans 12 to 18 months.
Therefore, a trademark is a sign that allows customers to identify your brand/product/service and, at the same time, to distinguish your brand/product/service from the ones of your competitors.
How to register a trademark in Italy?
It is possible to register your trademark either locally by the Italian Patent and Trademark Office (also called Ufficio Italiano Brevetti e Marchi – UIBM), or regionally through filing an application in European Union Trademarks (EUTM), through which we can get protection over the trademark in the whole European Union.
