Trademark Registration in Italy

Some of the generic words we use every day are trademarks. Take “YOLO” for example. It was trademarked by a restaurant in 2008! 

What Is a Trademark?

A trademark refers to a word, phrase, logo, or any, and recognizable symbol that is used to distinguish one manufacturer’s goods and/or services from those of other producers. Some of the generic words we use every day are actually trademarks. 

The ownership and use of a trademark belongs exclusively to the specific company that created it, whether it is registered or not. Both registered, and unregistered trademarks are valid, but are granted varying degrees of legal protection. 

Under Italian law, registered trademarks are guaranteed several means of protection. These are some top benefits of registering your trademark in Italy.

National Protection

Unlike an unregistered trademark, your registered trademark is protected across Italy. 

Being Valid Before Expiration Date

If you desire to go ahead with trademark revocation (that is, the removal of your trademark), you must prove your grounds for revoking the trademark. 

Better still, all third parties that want your trademark to be revoked must prove that you haven’t used the mark in the first five years. 

Trademark Prevents Infringement

Let’s say 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 the revocation of B’s trademark.

Under Italian law, B is regarded as the rightful owner of the mark because he registered it first. 

Registration Preserves The Trademark

It is not uncommon for trademarks to lose their distinctive characters. As portrayed in the example above, “YOLO” may have lost its distinctive character, but it still enjoys its legal benefits as a registered trademark. 

The Process of Filing a Trademark Application in Italy

You can file a trademark application in Italy in two steps; conducting a novelty search, filing the application for trademark registration. 

Conducting a Novelty Search

It is extremely important 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

Resist the urge to do your trademark application yourself. At this point, you should consult with a trademark attorney to determine the appropriate class or classes for your trademark.

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 in order for the UIBM to backdate the filing date of your new trademark application to the date 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. 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 are unable to translate your application, you will pay an additional fee to the UIBM for translation. You can submit your trademark application via the UIBM website. 

What to Do if Your Trademark Is Opposed by a Third Party

The registration procedure involves the examination of your trademark application by the UIBM officials. After the examination period, your application will be published for three months in the Italian Intellectual Property Bulletin 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 for the rejection of your trademark application. 

The UIBM will notify you of the opposition to your trademark and recommend conciliation as a means of settling between you and your opponent. If it is not possible to reach an agreement via conciliation, then you will submit your own 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. 

You can ask the opponent to prove that he has used the trademark for the class or classes of goods and services for which it was registered, within the past five years. If your opponent is unable to prove his legally acceptable use of the trademark or reasons for not using the trademark, his opposition will be rejected. 

If the UIBM accepts the opposition, then your trademark application will be declared partly or completely invalid. When you have been 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. 

The Costs of Registering a Trademark in Italy

In addition to attorney fees, you will pay the standard fees for the registration of your trademark, as prescribed on the UIBM website. If you’re submitting your application in a foreign language, you must pay the translation fees as well. 

Final Words

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:

How Much Is It to Trademark a Name in a Remarkable Way in the UK