In Italy, there is no legal obligation to register a trademark. You can use an unregistered trademark, known as a “de facto” trademark, but its protection is strictly tied to its recognition among consumers as a distinctive sign and its geographical scope of use. If your unregistered trademark is only known locally, you cannot prevent others from using or registering an identical or similar trademark. You will only have the right to continue using the trademark within the specific territorial and commercial limits established prior to someone else’s registration.
– Exclusive Rights: Exclusive rights to an Italian trademark are granted only upon registration, with retroactive effect from the application date.
– Territorial and Product Scope: The protection granted by trademark registration is limited to the Italian territory and covers only the products or services specified in the registration, as well as those similar. Only well-known trademarks enjoy broader protection.
– Classification: The products and/or services the trademark will distinguish must be specified during the application process according to the “Nice Classification” recognized internationally.
– Duration: An Italian trademark lasts for 10 years from the application date (not the registration date).
– Renewal: Trademark registration can be renewed every decade indefinitely.
Steps in the Italian Trademark Registration Process
1. Filing the Application: Submit your trademark application to the Italian Patent and Trademark Office (UIBM) in Rome at the Ministry of Economic Development or via local Chambers of Commerce, which will forward it to UIBM. Applications can be filed directly by the applicant or through an attorney or authorized trademark agent.
2. Formal Examination: The UIBM checks the application for compliance with the Industrial Property Code (e.g., applicant details, representation of the trademark, product/service classes).
3. Absolute Grounds Examination: UIBM examines whether there are absolute grounds for refusal (e.g., the trademark is a common sign in everyday language or commerce, is contrary to law, public order, or morality, or is descriptive or deceptive).
4. Publication: If the application passes the examination, it is published in the Official Bulletin for inventions, models, and trademarks.
5. Opposition: Within three months of publication, owners of earlier Italian trademarks or rights holders of famous names or signs can oppose the registration. This administrative procedure is handled by UIBM. If no grounds for opposition are found, the trademark is registered.
6. Registration: If no impediments are found or any oppositions are resolved positively, the trademark is registered, and a registration certificate is issued. The registration process takes between 1 to 2 years in the absence of opposition.
For assistance with trademark registration in Italy, our expert IP lawyers at OS Law are here to guide you through every step of the process.
