European Patent Validation in Italy
Italian Trademarks
Trademarks in Italy: requirements for registration of a Trademark in Italy.
Requirements for registration
- Novelty: the trademark must not be identical or similar to one which has been registered or used (not local use nor intermittent use) by others before the filing date, for similar goods or services.
Trademarks which "enjoy reputation in Italy" can be enforced against use for different g/s, provided that non-justified cause, detriment to distinctiveness of the reputed mark (dilution) and/or to its reputation (tarnishment) is proved.
- Non descriptiveness: the use of the trademark must not consist exclusively of general or descriptive information on the quality, the quantity, the destination, the geographic origin of the product (e.g. "superpolish" or "cleanest" for a detergent cannot be registered).
- Non deceptiveness: in meaning or use: trademarks have not to be deceptive "per se" or in their use. If the trademark is "per se" deceptive or its use is or it becomes deceptive, the trademark can be declared null or can lapse for acquired deceptiveness.
- Lawfullness: trademark that are contrary to morality or public order are excluded from registration .
Trademark rights
A natural or legal person can enforce trademark rights from the application date.
Earlier use: In case of (not merely local) earlier use of a non-registered trademark, rights are valid from the earlier use date.
In this case, it is up to the person claiming prior use to exhibit proofs of use.
Enforcement (legal description, seizure, inhibitory) can be carried out after the trademark application has been filed or prior use has been proved.
Registration validity: The registration lasts ten years from the filing date and can be renewed for a subsequent period of ten years and so on.
Lapsing for non-use: a trademark, whose use has not been started within 5 years from the registration date or it has been interrupted for 5 consecutive years, without justified reasons, can be liable of being cancelled for lack of use.
This action can be started by any interested party before a court; the Italian PTO does not require itself a proof of use after the 5-years-period.
Helpful hints to file a trademark application in Italy
BEFORE FILING
The Italian PTO carries out only an administrative examination of trademark applications.
The application is checked as regards correct classification of goods and services and on absolute grounds only (mere descriptiveness, signs against morality or public order etc.).
No examination on earlier Italian applications or registrations is carried out. Therefore, registration of duplicates may happen.
Consequently, we propose you to search on Italian, Community and International Trademarks, designating Italy, for identical or similar marks for identical or similar goods or services.
AFTER FILING
As mentioned above, the Italian PTO does not refuse "ex officio" duplicates or conflicting applications .
In order to protect your Italian Trademarks, we propose you a WATCH SERVICE for Italy (watch on Italian, International and Community Trademarks).
OPPOSITION TO TM REGISTRATION IN ITALY
At present, the opposition procedure before the Italian PTO is not still in force: the Implementing Regulations have been issued, but the publication of the Trademark Bulletin online has not yet started and other matters of organisations have to be solved.
It is hoped that by the end of 2010, the opposition procedure for trademarks can start before the Italian PTO.
At present, the only way to challenge an Italian conflicting application, or the Italian part of an International Registration, is to contact the owner, warning him about the infringement of an earlier trademark right and, if necessary, sue him before a Court, to cancel the conflicting trademark.
We can offer you legal assistance in this cases of extra-judicial or legal proceedings.
