Trademark

The procedure for registering an Italian trademark application begins with its filing at the Italian Patent and Trademark Office (UIBM) based in Rome or at the peripheral offices in all the provincial Chambers of Commerce.

The application for registration must substantially include a representation of the trademark and a detailed and precise description of the products and / or services that the trademark is intended to distinguish also in the light of the provisions of the IP Translator ruling of the Court of Justice of the European Union.

The trademark application is subject in Italy to the payment of a filing fee, the amount of which varies according to the number of product categories of the products and / or services claimed; the corresponding renewal fees are also provided, which will eventually be paid every ten years from the date of first filing.

Once filed, the application is subjected to an examination aimed at assessing whether or not the trademark satisfies the formal requirements and the so-called “absolute” validity requirements; or, in essence, if it has a distinctive character, is not contrary to the law, public order, morality or is not suitable for deceiving the public. The UIBM, on the other hand, does not conduct any examination regarding the so-called “relative” impediments, or the novelty of the proposed trademark with respect to earlier trademark applications / registrations valid in Italy.

In the absence of any findings by the Italian Patent and Trademark Office, the trademark application is published in the Italian Journal of Trademarks. Within three months of publication, third parties may file any objections based on previous rights. In the event that no oppositions are filed, the trademark will continue its registration process, reaching registration in a period of approximately 10 months from the filing date.

The opposition procedure in Italy was prepared along the lines of the procedure currently in place in relation to European trademarks, thus providing for a two-month “cooling off” period, or a period granted to the parties to seek a settlement solution to the question that arose. (extendable term), and only, in the absence of an agreement between the parties, a real administrative opposition procedure.

The introduction of the opposition procedure in Italy represented an important innovation for the protection and defense of trademark rights in Italy. We therefore suggest that you always protect your products and / or services by means of a specific trademark registration application (an opposition in Italy cannot be based on de facto rights), activate a surveillance service to become aware of any subsequent rights valid in Italy. identical and / or similar against which to lodge opposition, annotate / transcribe any changes / transfers of ownership of rights to the competent authorities, transcribe any license agreements having value in Italy.

In the absence of a complete examination, the registration of the Italian trademark does not constitute a guarantee of validity. The validity of the trademark is, in fact, taken for granted until proven otherwise, or until it is challenged in the context of a possible case of invalidity where any “absolute” impediments may also be asserted; for this reason, before filing a new Italian trademark application, it is always advisable to conduct a prior art search in order to verify the presence of any previous rights of identical and / or similar third parties, which could constitute an obstacle to use and / or the registration of the proposed trademark.

Once the opposition phase has been passed, the trademark will be able to complete its registration process.

The Italian trademark has a duration of ten years from the filing of the application, and can be renewed for subsequent periods of ten years; the trademark, however, can be attacked for non-use if it has not been used within five years of registration, or if its use has been suspended for an uninterrupted period of five years, unless the non-use is not justified for a legitimate reason

The right conferred by the Italian trademark can be opposed to third parties starting from the filing date.

Following the amendments to the European trademark regulation introduced on 23 March 2016, we no longer speak of a community trademark as it did since 1 April 1996, but of a European trademark.

The main characteristic of the European trademark consists in the fact that it represents a right having a unitary character; therefore, it produces the same effects throughout the European Union.

The requirements of a European trademark application are substantially in line with those of an Italian trademark application. The main difference concerns the language: the European trademark application can in fact be drawn up in any of the languages ​​of the states belonging to the European Union, indicating as a second language one of the five official languages ​​(English, Spanish, Italian, French, German).

The filing of a European trademark application must be made at the EUIPO (European Union Intellectual Property Office) based in Alicante. The application for a European trademark is also subject to the payment of a filing fee, the amount of which varies according to the number of product categories of products and / or services claimed; the corresponding renewal fees are also provided, which will eventually be paid every ten years from the date of first filing.

The registration procedure for a European trademark application is managed directly by the EUIPO and includes several phases: an examination phase, a research phase (on request), a publication phase of the application, an opposition phase and a phase of registration.

During the examination phase, the EUIPO performs a check on the formal regularity requirements and absolute grounds. Subsequently, a search is carried out only on request and only among European trademarks, aimed at highlighting any earlier European trademark applications / registrations identical or similar to the protected trademark; the EUIPO then transmits the result of the search to the owner of the new trademark application and informs the owners of any earlier European trademarks that emerged from the search of the filing of the new trademark application in question.

The application is then published; from that moment, any holders of previous rights, whether European or national, have three months to file an opposition against the registration of the trademark.

Consequently, similarly to the Italian case, before filing a new European trademark application, it is always advisable to conduct a prior art search in order to verify the presence of any previous identical or similar rights at European level (European, international and national trademarks European countries), which could constitute an obstacle to the use and / or registration of the proposed trademark.

Once the opposition phase has been passed, the trademark is then registered. If no problems arise in one or more of the aforementioned phases, the procedure has a total duration of approximately 7 months or less.

Unlike the Italian national trademark, the right conferred by the European trademark can be opposed to third parties only from the date of registration.

The European trademark has a duration of ten years from the filing of the application and can be renewed for subsequent periods of ten years; the trademark, however, can be attacked for non-use if it has not been used within five years of registration, or if its use has been suspended for an uninterrupted period of five years, unless the non-use is not justified for a legitimate reason. With regard to the use of the European trademark, its use in a serious, effective and continuous manner even in a relevant part of the European Union is considered equivalent to its use in all states of the same; therefore, it will not be necessary to comply with the various national regulations regarding the use of the trademark in the various states, but it will be enough to use it in a serious and effective way even only in a part of the European Union.

Furthermore, in the event that the trademark is refused, withdrawn or has been subject to termination of validity within the European Union, it may be subject to conversion into national applications having effect from the filing date of the European trademark.

Italy also adheres to the so-called “Madrid System”, which unites some of the main industrialized states in a centralized filing procedure and allows you to obtain, through a single registration procedure, the registration of a trademark in several states or regions. , as long as they are part of the Madrid System.

The registration of international trademarks is governed by the Madrid Agreement and the Madrid Protocol.

The application for an international trademark can be based on a corresponding pre-existing Italian or European trademark registration or application and is filed and administered with the World Intellectual Property Organization (WIPO), which is based in Geneva.

The international trademark application is also subject to the payment of a filing fee, the amount of which varies according to the number of categories of products and / or services claimed, the states / regions designated and the type of trademark filed; the corresponding renewal fees are also provided, which will eventually be paid every ten years from registration for each designated state.

Once the application has been filed, WIPO carries out an examination relating only to the formal requirements. In the absence of any findings, it registers the international trademark in the International Register of Trademarks. Subsequently, WIPO sends a copy of the international trademark application to the administrations of the states designated therein, where it will be examined on the basis of the regulations in force locally.

Also from the date of registration, interested third parties will be able to assert any causes of nullity or forfeiture provided for by local laws, both in the state of origin and in the various states in which the registration was extended. It is also possible to proceed with a “central attack” in the country of origin: the international registration is in fact linked to the basic trademark for five years from its registration. During this period, in fact, any modification or occurrence relating to the basic trademark will have a direct repercussion also at an international level. After the above five years have elapsed, the national portions of the international brand become independent of the base brand.

Once the international registration has been obtained, should it be of interest to designate other states and / or regions of the Madrid System, in addition to those already indicated in the filing, it will be possible to submit an application for later designation, which will take effect from the date of registration of the same in the International Register and will cease to have effect upon expiry of the international registration to which it refers.

Contrary to the Italian and / or European trademark, the international trademark has a duration of ten years from registration (and not from the filing date of the application) and can be renewed for subsequent periods of ten years.

With regard to the use of the international trademark, the national regulations of the individual designated states must be respected.