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?).
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.
European Union trademark registration takes place through a single procedure and confers protection in all European Union member states (Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, the Netherlands, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden) as a whole and indivisibly. Registration is handled by the European Union Intellectual Property Office (EUIPO), and no actions before national industrial property offices are necessary.
The European Union trademark (EU trademark) system coexists with European national registration systems. This means that earlier national trademarks constitute earlier rights against an EU trademark and vice versa.
A European Union trademark application must include an indication of the trademark or specimen (representation) if it includes graphic elements or colours, the list of goods and/or services for which registration is sought, the name and address of the applicant and, if the applicant has chosen to be represented before the European Union Intellectual Property Office (EUIPO), a signed power of attorney. (Non-EU applicants are obliged to be represented before the EUIPO).
A European Union trademark application may be filed either with national trademark offices of European Union member states (Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, the Netherlands, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom) or with the EUIPO located in Alicante (Spain). No local presence is required.
Availability searches are always advisable when filing national and Community trademark applications. However, in the case of the European Union trademark a thorough availability search would mean ordering a search in each of the European Union’s 27 states – and of course multiplying the search costs. Upon the applicant’s request only, and for a fee, the EUIPO carries out a similarity search as to prior trademarks in the national registers of Austria, Czech Republic, Denmark, Finland, Greece, Hungary, Lithuania, Poland, Romania, and Slovakia. The prospective applicant could therefore limit an availability search to the remaining European Union member states. Alternatively, it is advisable to file the application saving the cost of an EU-wide search and deal with possible oppositions and /or objections by third parties if they occur.
The examination performed on European Union trademark applications is a quasi-adversarial proceeding aiming to assess whether registrability requirements have been met. Descriptiveness, unlawfulness and deceptiveness are absolute grounds for refusal. Secondary meaning may be invoked to overcome certain objections on absolute grounds. The EUIPO then produces an EU search report listing identical or similar EU trademark applications and registrations for identical and similar goods and services. No examination as to prior national and even EU trademarks is carried out by the EUIPO.
This depends on whether absolute grounds for refusal are found to exist and / or whether the application is opposed. If neither of these conditions occur, registration is granted after about 15-18 months from application.
Oppositions can be lodged within three months following the publication of the EU trademark application. Therefore, earlier rights do not automatically cause refusal of the European Union trademark application. The owners of identical or confusingly similar prior EU, national or International trademarks designating one or more European Union member states, the owners of well-known marks pursuant to article 6 bis of the Paris Convention or of registered trademarks enjoying a reputation, and the owners of unregistered rights -if provided for by the law of the member state- having more than a local significance for identical or similar goods/services may file an opposition. The applicant for the opposed mark may request the opponent to prove use of the prior mark if registered for more than 5 years.
All European Union trademark applications are published in the weekly EU Trademarks Bulletin, whose data base is also available on the web site of the European Union Intellectual Property Office. More conveniently, our free trademark watch service warns clients owning national trademarks of any conflicting EU trademark applications.
The European Union trademark’s use requirement rule provides that EU trademark registrations can be revoked if the mark is not put to genuine use in the EU in connection with the goods or services for which it is registered within 5 years from the date of registration. Also, the registration may lapse if use is interrupted for a continuous period of 5 years.
An EU 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.
Any individual, organisation or company based in the European Union may apply for a .it or a .eu domain name. .it domain names only can be requested also by individuals, organisations or companies based in European Economic Area countries: Iceland, Liechtenstein, Norway, Republic of San Marino, Switzerland and Vatican City.
.it and .eu domain names are valid for one year, and may be renewed indefinitely.
In order to be registrable in the .it register, domain names must meet the following requirements:
In order to be registrable in the .eu register, domain names must meet the following requirements:
Non-use does not affect the owner’s right to registered .it or .eu domain names.
.it and .eu domain names may be assigned at any moment, provided that the assignee meets the necessary requirements (see answer to “Who may apply for a .it or .eu domain name?”).
Alternative Dispute Resolution (ADR) procedures are available both for .it and .eu domain names. Under Italian law, the application of an ADR procedure does not prevent any party involved from resorting to ordinary judicial proceedings.