SIB - Società Italiana Brevetti

The Italian Patent and Trademark Office (IPTO) carries out no search as to prior marks. The IPTO checks whether registrability requirements are met. Descriptiveness, unlawfulness and deceptiveness are absolute grounds for refusal. Secondary meaning may be invoked to overcome some objections on absolute grounds.

The trademark registration is granted about 2 to 3 years after the filing date, if the application is not refused. The wait is shorter (i.e. 3 to 5 months) if the Italian trademark application is used as a base for an International registration (under the Madrid Agreement). In any case protection runs as of the filing date (see Can the applicant for an Italian trademark enforce his rights before grant?).

As from1 July 2011 it is possible to file oppositions against Italian trademark applications filed as from 1 May 2011 as well as against International registrations designating Italy published in the Gazette of the World Intellectual Property Organization as from 1 July 2011. See our information section on Italian trademarks for further details on the procedure.

Italian trademark applications may only be filed in Italian.

An Italian trademark registration has a duration of 10 years running from the filing date. An indefinite number of renewals is possible for subsequent 10-year periods.

An Italian trademark enjoys protection from the day the application is filed. The applicant for an Italian trademark has the right to prevent unauthorised third parties from using the mark, and to bring court actions or request and obtain interim injunctions for that purpose.

The Italian legal system provides for injunctive relief which can be requested and applied expeditiously enabling trademark owners to protect their rights against infringers. Even before the infringement case is heard in court, the right holder may request the judge to grant an inhibitory order, i.e. an order to cease the allegedly infringing activity and/or to seize the allegedly infringing items.

The owner of a well-known trademark pursuant to Article 6 bis of the Paris Convention or of a trademark enjoying a reputation in Italy may prevent the use of a later identical or confusingly similar trademark even when this is used for dissimilar goods or services if the use of the later mark without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier trademark.

An unregistered trademark which is not known or is known only locally may still continue to be used locally in spite of subsequent registration by third parties. Local use does not affect novelty as far as subsequent trademark registration by a third party is concerned. Conversely, an unregistered mark used widely and known at a national level enjoys exclusive rights which may be enforced pursuant to the provisions against unfair competition.