ITALY

• Kinds of Trademarks registrable in ITALY

  • Following indications may be used as Trademarks in Italy:

    • Words & Word combinations
    • Slogans
    • Personal names
    • Company names
    • Names of real properties
    • Letters & Numerals
    • Pictures & Designs
    • Shape marks
    • Equipment & Packaging of goods
    • Colour marks
    • 3 Dimensional marks Combination of all of the above.

    Types of Marks registrable:

    1. Collective marks
    2. Certification marks
    3. Marks for non-commercial purposes
    4. Service marks
    5. Well Known marks
• Requisites for a Trademark to be registrable in ITALY

  • Trademarks must contain the following essential requirements to be registrable in Italy:

    • Distinctiveness
    • Non-descriptiveness of the goods and / or services
    • Not be a well known term in the line of business, trade channels of the applicant
    • Not be same / similar / identical either visually and/or phonetically  to prior registered marks pending registration.
• Kinds of Trademarks not registrable in ITALY

  • Applicants should bear in mind that the following will not be registrable as Trademarks in Italy:

    1. Trademarks consisting exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services.
    2. Trademarks that indicate time of production of the goods or of rendering the services or other characteristics of the goods or services.
    3. Trademarks consisting exclusively of signs or indications customary to current language or in the established practices of the trade to designate the goods or services.
    4. Trademarks or signs contrary to law, public order, morality
    5. Trademarks filed in bad faith.
    6. Trademarks liable to deceive the public as to the nature, quality, geographic indication of goods or services.
    7. Trademarks containing or being similar to signs, seals, emblems, flags, maps and / or official insignia of national and international organisations and associations.
    8. Trademarks containing or bearing resemblance to another person or personal name or company name, logo, legal title, portrait, picture, protected copyright, photograph
    9. Proposed Trademarks being identical or similar to an earlier registered mark including well known marks
    10. Trademarks having a likelihood of confusion including a likelihood of association with an earlier registered trademark.

    TrademarkCopia through its associate Law Firms and Lawyers in Italy is at hand to help you with trademark registration and prosecution.

• Trademark Search in ITALY

  • A search is almost always conducted to rule out similar and / or prior existing identical marks with regards to:

    • Denominative Elements wherein, the mark is made up of only words.
    • Figurative Elements  wherein, the mark is made up of only graphic devices.
    • Marks containing both Figurative and Denominative Elements.

    A search is useful in determining the following:

    1. Conflict with existing trademarks.
    2. Confirm validity of the proposed trademark.
    3. Evaluate the filing of the application and assess the risk of nullity and 3rd party claims.
    4. Strategise on the kind of mark to file regarding the denominations such as figurative, coloured, black & white etc.
    5. Search is a useful tool prior to filing of applications search concerning prior pending marks carried out by the Italian Trademark Office.It is highly advisable to conduct a search of the proposed mark to ensure that a similar mark has not been applied for by other contenders and is not pending registration or is already registered.

    It is highly advisable to conduct a search of the proposed mark to ensure that a similar mark has not been applied for by other contenders and is not pending registration or is already registered.

    Our Attorneys are at hand to assist you with searches and provide opinions about registrarbility of the proposed / coined trademark in Italy.

• Trademark Filing in ITALY

  • Filing is done with the Trademark office of Italy. Applicant has to furnish the following documentation for filing:

    1. Name of the applicant
    2. Logo (if any) in B/W or Colour
    3. Address along with nationality of the Applicant
    4. Classes in which Registration is sought.v  Power of Attorney (POA)
    5. Details regarding Goods and Services for which registration sought
       (Goods and Services classified as per NICE classification)
    6. (Vienna Agreement for figurative mark)

    TRADEMARKCOPIA.COM  will assist you with the following:

    • Filings
    • Infringement & Opposition Actions
    • Renewals
    • License and Assignment procedures
    • Trademark Watch Services
• Trademark Examination in ITALY

  • Once the trademark application is filed, it is examined to ascertain fulfillment of all the requisites by way of formality examination and substantive examination.

    Non-fulfillment of any of the requisites is an absolute ground for refusal of registration of the trademark application.

• Trademark Publication & Opposition in ITALY

  • Upon the trademark being examined, it is published in the official IP journal. Interested third parties may file their opposition to the registration of the trademark.

    TrademarkCopia through its experienced Trademark Lawyers and Trademark Attorneys in Italy can comprehensively assist you with trademark opposition and prosecution.

• Trademark Registration in ITALY

  • Once the trademark application is accepted for registration, the Trademarks Office  will enter the details of the trademark onto the trademarks register and issue a Certificate of registration.

    Trademark registration in Italy is valid for 10 years from the date of filing date after which it can be frequently renewed for another 10 years.

    Rights of Trademark Owners:Trademarks may be:

    • Exclusively used by the owners of the registered trademarks.
    • Transferred in whole or in part- Inherited
    • Assigned and licensed.
    • Mortgaged and creditors may seize such trademarks belonging to their debtors.
    • Licensed to natural or legal persons
    • Prevented from unauthorized usage by third parties
    • The subject of appropriate redressal from a court of law upon infringement
• Trademark Usage in ITALY

  • Use of the mark on exports by way of imprinting the mark on the wrappers of the goods, containers and accompanying brochures etc. would be sufficient usage.

    • Use by way of nationwide advertisements in Italian publications is also deemed sufficient usage.
    • However, use by way of advertisements widely circulating in Italy or chiefly on the Internet would be insufficient usage.
    • Usage in trade fairs, meets, conferences not followed by actual use is insufficient usage which could lead to forfeiture.
    • Registration would stand invalidated if the mark is not used within 5 yrs. From the grant of registration.
• Trademark Cost of Registration in ITALY

  • Please write mail for the cost of registration of trademark in Italy or European Union to the mail address given below:

    contact@trademarkcopia.com