Some of the generic words we use every day are trademarks. Take “YOLO” for example. It was trademarked by a restaurant in 2008!
Various other examples of words and phrases have provided businesses with a sharp rise in sales with their unique collection of words. However, it equally becomes necessary to protect these words and phrases from misuse, which can be done through trademarks. This article aims to provide a comprehensive understanding of trademarks and how it is possible to undergo trademark registration in Italy.
What Is a Trademark?
A trademark refers to a word, phrase, logo, or any recognizable symbol distinguishing one manufacturer’s goods and/or services from those of other producers. Some of the generic words we use every day are trademarks.
Under Italian law, registered trademarks are guaranteed several means of trademark protection. These are some of the top benefits of registering your trademark in Italy.
A has been using an unregistered trademark, “Cooky,” in Italy since February 2020. If B registers Cooky in Italy in June 2022 and starts using it, A cannot sue for revoking B’s trademark.
Under Italian law, B is regarded as the rightful owner of the mark because he registered it first. This means that irrespective of whether you used the trademark first, the person who registers the trademark shall get the advantage of arguing for the existing trademark from the application date itself. Learn more about trademarking a logo in the UK for comprehensive protection.
Types of Trademarks in Italy
Trademarks are mainly divided into the following categories:
- Product. They are adopted by a company to distinguish their products. It is impossible to suppress a product trademark by the trader when the producer has applied for it.
- Merchandise. They are adopted by a commercial body to distinguish between the goods sold through their commercial channels, irrespective of being a shop or warehouse.
- Service. They help in distinguishing the activities of the companies operating in various fields. Some include – advertising, transport and communication, insurance and credit, radio and television, construction, etc. It is only possible to distinguish between the services the company provides to third parties.
Along with these categories, we also have collective trademarks. These trademarks do not belong to those who use them but are generally granted to anybody, normally organized as a company. Therefore, the trademark concedes its use to whoever possesses the necessary prerequisites and respects the conditions of use, which must be established and filed together with the trademark.
Collective trademarks should not be confused with some types of signs which are derived from specific European and Italian laws, which were introduced to protect agricultural and food products. The same has been specified through the EEC Regulation No. 2081/92, which has created the following trademarks:
- Denomination of Protected Origin (DPO). This category is used to identify products which are transformed, processed and prepared within a determinate geographical area. Some common examples include – San Daniele ham, Sardinian “pecorino” cheese and some olive oils.
- Indication of Geographical Protection (IGP). This category includes products which have at least one of the stages of production, transformation, or processing taking place in a determinate geographical area. Some of the common examples include – Pachino tomatoes and Colonnata pork fat.
- Traditional Speciality Guaranteed (TSG). This category includes products without a specific origin but characterized by a traditional composition of the product or through a traditional method of production. A common example includes – mozzarella.
It is important to note that even before the abovementioned ECC Regulations, Italy had norms to protect agricultural and food products. The following national certification system is exclusively used for wines. These are:
- Denominazione di Origine Controllata e Garantita (Denomination of Controlled and Guaranteed Origin) (DOCG) – This has been given to all wines. Apart from the quality wines, the requirement is that they must be bottled in the area where they are produced and within containers with a capacity of less than five litres.
- Denominazione di Origine Controllata (Denomination of Controlled Origin) (DOC) – These are given to quality wines originating from limited areas, usually referred to in the name of wine. Wines of this denomination must also respect specific oeno-chemical and organoleptic characteristics laid down by production Regulations.
- Indicazione Geografica Tipica (Typical Geographical Indication) (IGT) – These are inclusive of table wines from extensive geographical areas, with less stringent chemical and organoleptic requirements than those laid down for DOC wines.
Strong Trademarks and Weak Trademarks
Trademarks made only through a slight modification of a general word of a product have very limited protection and is, therefore, known as a weak trademark. The extent of its protection is the extent to which it differs from the general denomination of the product. Example – use the word “automobile” to distinguish a car “automobile”.
Strong trademarks, on the other hand, have the power to individualize the product. Here, the words, figures, and other signs which make a trademark do not portray any conceptual connection or link with the products from which they are distinguished.
De Facto Trademarks
It becomes possible for a company to acquire the exclusive right over the use of a trademark, irrespective of whether the trademark has been registered or not. The unregistered trademarks are also known as de facto trademarks. These trademarks have lesser juridical protection, and the holder can prevent the registration of the trademark by an interested third party only if the trademark has achieved certain widespread fame throughout the national territory. If this condition remains unfulfilled, this does not prevent the trademark from being registered by a third party.
For trademarks known abroad, if they have managed to extend their fame to Italy, it precludes the registration of the trademark in Italy on the part of third parties.
A combined trademark is a combination of different types of trademarks, including word elements and figurative elements. The exclusive right to use the trademark is only in the exact configuration or way in which it was filed and registered.
Process of Trademark Registration in Italy
You can file a trademark application in Italy in two steps: conducting a novelty search and filing the application for trademark registration.
Conducting a Novelty Search
It is vital to do a novelty search before choosing your trademark and filing your application. The Italian Patent and Trademark Office (UIBM) will only examine your trademark to see if it has a distinctive character but will not conduct any search to know if your trademark is infringing on a prior registered trademark.
You can carry out the search yourself on the UIBM database. Better still, consult a trademark attorney to conduct the trademark search for you. Besides searching for identical trademarks, you should also check to see if your trademark has not been used by other third parties as domain names on the web.
Filing a Trademark Application
If you have a priority application for the registration of your trademark, you must submit a certified copy of that application along with the new one to the UIBM. The importance of sending your priority application is for the UIBM to backdate the filing date of your new trademark application to when the priority application was filed.
By doing so, you will be legally recognized as the first person to file an application for the registration of that trademark in Italy as per the filing date. Kindly note that your priority application must not be more than six months old for it to be considered by the UIBM.
If you don’t have a priority application, you must submit any documents that prove that your trademark has a distinctive character.
In addition, all documents submitted to the UIBM must be written in Italian. If you cannot translate your application, you will pay an additional official fee to the UIBM for translation. Your trademark application can be filed online via the UIBM website by filing a specific form. This platform requires the use of a smart card reading device for the digital signature.
What to Do if Your Trademark Is Opposed by a Third Party?
The trademark registration procedure involves the examination procedure of your trademark application by the UIBM officials. After the examination, your application will be published in the Italian Intellectual Property Bulletin for three months, which is made available to the public.
At this phase, any third party who does not support the registration of your trademark can submit their observations to the UIBM, requesting to reject your trademark application by submitting an opposition fee. The most common reason for opposition is the existence of preceding trademarks which are similar or the same as the trademark to be registered.
The UIBM will notify you of the opposition to your trademark and recommend conciliation to settle between you and your opponent. If it is impossible to reach an agreement via conciliation, then you will submit your objections to the opposition. The UIBM will arrange a date for you and your opponents to prove the grounds for the opposition, objections, and observations and file proof to become a part of the opposition proceedings.
If the UIBM accepts the opposition, your trademark application will be declared partly or completely invalid. When informed of the UIBM’s invalidation of your trademark, you can appeal to the Recourse Commission (according to section 135 of the Intellectual Property Code), which can either uphold or reverse the UIBM’s decision.
Costs of Registering a Trademark in Italy
In addition to attorney fees, you will pay the standard fees for registering your trademark, as prescribed on the UIBM website. If you’re submitting your application in a foreign language, you must also pay the translation fees. The trademark fee differs for registering in one class or registering in multiple.
Generally, the trademark fees in Italy are:
- Search Prices: First class $100.00 – Each additional class $80.00
- Application fees: First class $750.00 – Each additional class $150.00
Difference between the EU Trademark and the Italian Trademark
In Italy, applying for an EU trademark and an Italian Trademark is possible. Through the EU trademark, you can get protection of the trademark in all EU member states. However, the Italian trademark, through the national procedure, only provides you with protection in Italy.
One of the main advantages of the EU trademarks is that they are international trademarks that provide you with the trademark in a single international registration procedure. However, one of the significant disadvantages of the EU trademark is that if it is denied, it shall be denied in all EU member states. Therefore, it is advisable to have at least 1 national trademark and an EU trademark.
EU Trademark Registration
This is a single registration process that helps protect the trademark in all European Union member states. The registration may be done with the Office of the Harmonization in the Internal Market (OHIM), headquartered in Alicante, Spain.
- You first need to choose whether you want a “name trademark” or a “logo trademark”.
- Choose the class of registration, which must be made with particular care after consulting the Nice Classification.
- Undergo a trademark search and check if the trademark is available, along with understanding the likelihood of the trademark application being successful.
- File the trademark application in OHIM or with the Italian Patents and Trademarks Office (UIBM)
- If no opposition is filed by any third parties, the registration certificate or a trademark certificate is granted and a registration date of grant is assigned.
- Before the trademark is granted, any holder of an earlier identical or similar trademark or anyone considering that the trademark application violates its right may file an opposition to the registration within three months of publication.
For more information on how to register your trademark in Italy, visit the official site of the UIBM. Remember, trademark applications are time-sensitive in Italy. The earlier you file your trademark application, the better.
For further information regarding trademark registration in the UK, refer to:
Frequently Asked Questions
Is Italy a member of the Madrid System?
Yes, Italy is a member of the Madrid System. Therefore, if you wish to register your trademark through the Madrid System, the trademark has been automatically trademarked in Italy as well.
Is it possible to cancel the registration of a trademark?
Yes. The following are grounds for cancellation:
- Bad faith
- Proprietary Rights
- Prohibited marks in Italy
- Registered mark was used in misleading/disparaging manner
- Mark violated the moral principles or public order of Italy
- Mark included a protected badge or emblem
- Mark is generic
- Mark is functional
- Mark does not display distinctiveness
Who can contest my trademark registration?
The following interested parties have the right to contest your trademark registration:
- Owners of an earlier registered mark
- An exclusive licensee
How long is the opposition period of a trademark in Italy?
There is a three-month opposition period, which begins on the date of publication and will end three months after that date.
When can a renewal application be filed?
A renewal application for a trademark may be filed at the expiration date of the trademark, which is after 10 years of its registration in Italy.
Can your trademark registration in Italy lapse?
Trademark registration in Italy will lapse if it has not been used within 5 years from registration or if its use is discontinued for more than 5 consecutive years.