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
(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
(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
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
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.
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
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
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.
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
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
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
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.
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
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.