Overview of Italy Trademark Registration Service

LegalForce is one of the Largest Trademark Filers in the world. Filing a trademark application is easy and painless. You can finish your trademark in 5 minutes.

Italy Trademark Registration

Standard Package of Trademark Services $999 USD + govt fee

(832.50 Euro)
  • In the Standard Package, Filing a trademark application is easy and painless. You will be guided through a simple workflow to fill out the information needed to publish your trademark on Trademarkia or file your trademark with the government. If you select the government option, a licensed trademark attorney will represent you in the filing your trademark after performing a conflict check.
  • Go through a simple workflow

    All information provided will be kept in absolute confidentiality. Centralized, secure access for your brand trademarks.

  • Select which of the 170+ countries you wish to register

    Top Global IP Attorneys - Easy Online Form, Credibility, and Experience!

  • LegalForce does the rest. All processes will be performed in a timely manner

    Your trademark application will be filed correctly. You will be informed periodically about the process.

World Class Global Trademark Attorneys at Leading Law Firm.

LegalForce - one of the Largest Trademark Filers in the world. You can file and register your trademark in 170+ countries in the world through LegalForce Attorneys, including in the United States, China, Japan, the European Union, Korea, and many others. With the Standard Package, you follow step-by-step instructions designed by world class global trademark attorneys at leading law firm.

It's easy and the protection lasts indefinitely in most countries

Trademarks are names, logos, or short slogans that help distinguish a good or service from other goods and services in a particular geographic area. Once a trademark is issued by a government agency, the protection lasts indefinitely in most countries – so long as you use your mark in commerce. Filing for Trademark Protection through LegalForce Trademarkia is easy! See why LegalForce Service is superior to other options >>

Automated reminders keeps you up to date

Trademarkia can also automatically provide you with reminders and keep you up to date of your status after you file your trademark application. Trademarkia's automated reminders help you so that you don’t have to deal with government bureaucracy or forget important dates.

Background

Italy became a nation-state in 1861 when the regional states of the peninsula, along with Sardinia and Sicily, were united under King Victor Emmanuel 11. An era of parliamentary government came to a close in the early 1920s when Benito Mussolini established a Fascist dictatorship. His disastrous alliance with Nazi Germany led to Italy's defeat in World War II. A democratic republic replaced the monarchy in 1946, and economic revival followed. Italy was a charter member of NATO and the European Economic Community (EEC). It has been at the forefront of European economic and political unification, joining the Economic and Monetary Union in 1999. Persistent problems include illegal immigration, organized crime, corruption, high unemployment, sluggish economic growth, and the low incomes and technical standards of southern Italy compared with the prosperous north.

Who May Apply?

A registration may be obtained by any natural or legal person who is using or intends to use the mark in connection with the direct or indirect manufacture or trade of goods, or the rendering of services, provided that the application is made in good faith. The first applicant is entitled to registration. However, a prior user may enforce his or her rights of prior use against a registrant, provided that it is not merely a local use. Such prior use includes use as a trading style, trading name, or signboard. Registration may be granted to a foreign national provided that the applicant is a national of a country that grants reciprocity to Italian nationals. Foreign nationals must establish domicile in Italy either directly or by appointment of a local representative who is licensed to practice before the Italian Patent and Trademark Office.

What Can Be Registered?

The following may be registered: any sign, including a word, personal name, design, letter, numerals, sounds, the shape of goods or packaging, color combinations, or tonality which, on the date of filing of the application, is new and: (1) not customary in the current language or in the established practice of trade, unless the sign has acquired a distinctive character by virtue of its use or renown in the Italian territory prior to the filing of the application, or thereafter, but prior to a claim or counterclaim of nullity; (2) not identical with or similar to an earlier mark, whether registered or in de facto prior use, covering the same or similar goods or services if, by virtue of the identity or similarity of the signs and the identity or similarity of the goods or services, a likelihood of confusion may arise on the part of the public, which may also consist in a risk of association of the two signs; (3) not identical with or similar to an earlier registered mark covering dissimilar goods or services, if the earlier mark enjoys a reputation in the Italian territory and the use of the later mark would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier mark; (4) not identical with or similar to a corporate name, trade name, or signboard adopted by another party if, by virtue of the identity or similarity of the business they carry out and the goods or services covered by the mark, a risk of confusion, including the risk of association of the two signs, may arise on the part of the public. A trademark may be considered new even if it is identical with or similar to a mark, corporate name, trade name, or signboard already used by another prior to the application, provided that the use does not entail knowledge by the public or entails merely local knowledge; that is, the mark is unknown or known only within a limited territory. Such a prior user has the right to continue using the mark, corporate name, trade name, or signboard, notwithstanding the registration of the later mark, but only within the territorial limits of his prior use. Conversely, a trademark is not new if it is identical withor similar to a sign already known as a firm, business, or corporate name, and as a signboard or also as a domain name adopted by other parties if, by virtue of the identity or similarity of the signs and the identity or similarity of the business they carry out and the goods or services for which the mark has been registered, a risk of confusion may arise on the part of the public, which may also consist in a risk of association of the two signs.

What Cannot Be Registered?

The following may not be registered: (1) marks that cannot be rendered graphically, or are not capable of distinguishing, the goods or services of one enterprise from those of other enterprises, or are not new; (2) generic denominations of goods or services, or descriptive indications relating thereto, such as signs that may serve, in trade, as a designation of the kind, quality, quantity, intended purpose, value, geographic origin, or time of production of the goods or the rendering of the services, or other characteristics of the products or services, unless they have acquired distinctive I character by virtue of their use or renown in the Italian territory; (3) signs consisting exclusively of a shape imposed by the very nature of the goods, a shape of goods that is necessary to obtain a technical result, or a shape that gives substantial value to the goods; however, three-dimensional marks are registrable; (4) escutcheons and other signs not registrable according to international conventions under the conditions specified therein, and signs, including badges, emblems, and escutcheons, that are of public interest, unless the competent authority has authorized their registration; (5) signs capable of deceiving the public, in particular, as to the geographic origin, nature, or quality of the goods or services; (6) signs contrary to the law, public policy, or accepted principles of morality; (7) well-known personal names and signs used in artistic, literary, scientific, political, or sports fields, denominations and abbreviations of exhibitions and events and of nonprofit bodies and associations, as well as the characteristic emblems thereof, unless the party entitled thereto has authorized their registration; (8) signs the use of which would infringe copyright, industrial property rights, or any other third party's exclusive right. Except for collective marks, registration of trademarks consisting of geographical names is possible only if they are adopted as arbitrary names. The portrait of an individual other than the applicant himself cannot be registered except with the consent of the individual concerned or, should he be deceased, of certain of his relatives as specified by the Trademark Law. The name of an individual may be registered if its use is not detrimental to the reputation of the individual. His consent, or the consent of the persons specified in connection with the registration of portraits, should he be deceased, may be made a condition of registration by the Patent and Trademark Office, particularly in relation to famous persons, the consent of whom is always required.

Rights

The exclusive rights to a registered mark do not entitle its owner to prevent third parties fiom using in the course of trade their name and address, any indication concerning the kind, quality, quantity, intended purpose, value, geographical origin, and any other characteristics of goods and services and even the mark itself where it is necessary to indicate the intended purpose of a product or service, in particular as an accessory or spare part, provided in any case such uses are not for trademark purposes, but merely for description. Furthermore, the owner of a registration is not entitled to prevent use of the mark for goods that have been marketed in the European Economic Community under that mark by him or her or with his or her consent, unless there exist legitimate reasons for the trademark owner to oppose further commercialization of the goods, in particular when their condition is changed or impaired after they have been marketed.

Filing Requirements

The following items are required for applications for registration: - power of attorney, simply signed. The executed power may be submitted within the extendable term of two months from the filing date of the application. - a minimum of 12 prints of the mark, (a minimum of 12 additional prints in color if the mark is in color). Prints should preferably measure 8 x 10 cm, but may not exceed 13 x 24 cm. - for online filings, a sample of the mark in.jpg format is generally sufficient.

Evaluation & Review

An application for registration of a trademark is filed personally or by post with the Italian Patent and Trademark Office in Rome or personally or online with one of the Provincial Offices of Industry, Commerce, and Handicraft. An application for registration or for renewal of a trademark may also be filed electronically. Online filings enjoy slightly reduced official fees. The Italian Patent and Trademark Office examines the mark to determine whether it is distinctive, not deceptive, and complies with the law, public policy, and morality. Failure to fulfill any of these requirements is an absolute ground for refusal. Presently, there is no novelty relative examination of prior trademark applications or registrations nor opposition procedure. If convention priority is claimed, the Patent and Trademark Office will ascertain whether the relevant preconditions are met. If not available at the filing date, the Certificate of Priority may be submitted within six months from the filing date.

Duration

Registration is granted for a period of 10 years from the date of application and may be renewed thereafter for like periods. Application for renewal may be filed during the last 12 months of the period of protection. A six-month grace period is allowed on payment of an additional fee. A mark cannot be modified on renewal, but the specification of goods or services of the previous registration may be restricted at the owner's option. Pursuant to the transitional provisions of Decree No. 480 of 1992, applications filed through December 31, 1983, retained the 20- year term provided by the Decree. The new 10-year term provided by Decree No. 480 of 1992 applies to all applications filed from January 1, 1984, which therefore had to be renewed beginning in the year 1994.

Use

Use of a mark on goods exported abroad, or on their wrappers or containers, accompanying leaflets, etc., is acceptable. Use on nationwide advertisements in Italian publications or broadcasts is deemed sufficient if not purely nominal, while use in advertisements in foreign publications, although widely circulating in Italy, or mainly on the Internet, is questionable. Use in trade fairs only, not followed by actual use, is not sufficient to prevent forfeiture. Pure local use, such as in the major Italian cities (e.g., Rome, Milan, Naples, Turin, Bologna), may also be sufficient if it is done in a notable quantity and for a certain time. In case of sufficient use, it is not necessary to file a declaration or any proof of use with the Italian Patent and Trademark Office. Trademark rights are maintained for the goods and/or services in connection with which the trademark or a similar sign of the same owner has been actually used, and for the goods and/or services similar thereto, independently from the class(es) wherein they are classified. Use of the trademark by a previously authorized third party, such as a licensee or a connected enterprise, is regarded as use by the owner of the trademark itself. Registration may be obtained independently from prior, actual, or intended use. However, a registration is deemed forfeited if the mark is not used within five years from the date of grant of the registration, or if use is interrupted for a continuous period of five years, unless justified by a legitimate cause. For registrations granted before December 31, 1989, their nonuse period was three years.

Domain Names

The Italian naming authority is the Italian Registration Authority. The official Web site of the authority is http://www.nic.it. Only companies or individuals domiciled in the European Union can register an .it domain name. The Registration Authority does not check for possible conflicts with trademarks, and the registration renewal is due every year, unless otherwise provided for by the maintainer. As a precaution, judicial authorities may inhibit not only the use of a company's domain name unlawfully registered, but also its provisional transfer, by subordinating such transfer where appropriate to the payment of a security by the beneficiary of this precautionary measure.

Enforcement

Italy has implemented a series of European Commission regulations that protect the rights of mark owners from infringement. Among other things, these measures block the importation, exportation, and reexportation of counterfeit goods through enforcement by the Customs office. The trademark owner or exclusive licensee can apply for registration before the Customs office, providing all the possible pieces of information about his rights, the marked goods, and the possible counterfeit goods, paying the prescribed fee, and depositing security. The customs registration can be renewed every six months.