Trade Marks 2018

1. Relevant Authorities and Legislation

   1.1 What is the relevant trade mark authority in your jurisdiction?

   The relevant trade mark authority in Italy is the Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi - UIBM).

   1.2 What is the relevant trade mark legislation in your jurisdiction?

   The relevant trade mark legislation is the Italian Code of Industrial Property, the implementing Regulation of the Italian Code of Industrial Property and Italian Civil Code.

2. Application for a Trade Mark

   2.1 What can be registered as a trade mark?

   You may register as a trade mark any sign that is capable of being represented graphically, provided that such signs are capable of distinguishing the good or service of one undertaking from those of other undertakings. In particular: words, including personal names; sounds; the shape of goods or of their packaging; colour combinations; or tones, may be registered as trade marks.

   2.2 What cannot be registered as a trade mark?

   According to the Italian Code of Industrial Property, the following signs shall not be registered as trade marks:

1. signs that are not capable of being represented graphically;

2. portraits of persons without the person's consent and after their death, without the consent of close relatives;

3. signs consisting exclusively of the shape required by the nature of the product, the shape of the product necessary to obtain a technical result, or the shape that gives substantial value to the product;

4. signs that consist of coats of arms or other signs considered in existing international conventions on the subject matter and within the limits provided in such conventions;

5. signs containing symbols, emblems and coats of arms which are in the public interest, unless consent is given by the appropriate authorities;

6. signs that lack novelty (due to the fact that the sign for which an application is filed is identical or similar to another sign);

7. signs that lack distinctive character;

8. signs that are contrary to the law, public policy or accepted principles of public morality;

9. signs that can mislead the public; in particular, with reference to the geographical origin, nature or quality of the goods or services; and

10. signs whose use would represent an infringement of others' copyright or industrial property right, or of other parties' exclusive rights.

    2.3 What information is needed to register a trade mark?

    In order to register a trade mark in Italy, it is required to point out the name of the applicant, the address of the applicant (as well as email address), the percentage of ownership of the sign, a description of the trade mark to be filed (either if it is a word mark or a figurative trade mark), and the list of goods and services claimed. If the trade mark is filed electronically, a .jpg file with the image of the trade mark (including for word trade marks) shall be filed. If the trade mark is filed in paper form, the reproduction of the trade mark shall be filed in A4 paper format. In the event of a priority claim, the references (trade mark application/registration number) of the claimed trade mark shall be specified.

    2.4 What is the general procedure for trade mark registration?

    The applicant files the trade mark application either directly before the UIBM or indirectly through the competent Chamber of Commerce, and afterward receives the receipt of filing and a receipt containing the amount of the official fees to be paid. The trade mark is officially filed as soon as the applicant pays the filing fees. The UIBM then: (i) verifies the admissibility of the application (indication of the applicant, reproduction of the trade mark and indication of the goods and services claimed); (ii) conducts a formal examination (regarding the completeness of information contained in the application form); and (iii) examines the lack of absolute grounds for refusal. After about one year from the filing date (on average) and provided that the UIBM does not raise objections, the trade mark gets published in the Trademark Bulletin. From the date of publication, a three-month period runs, during which: (i) third parties that own a trade mark already registered in Italy and with effect in Italy from an earlier date; (ii) third parties who filed an application for registration of a trade mark in Italy on an earlier date or that has effect in Italy from an earlier date by means of a right of priority or a valid claim of seniority; (iii) a licensee with the exclusive use of the trade mark; or (iv) persons, entities and associations that have prior rights on a person's names or portraits and well-known signs, may file an opposition to the registration of the trade mark. Starting from the date of publication, any interested third parties can file observations with the UIBM, explaining the reasons why a trade mark shall not be registered. If such observations are deemed relevant by the UIBM, it informs the applicant, who has 30 days in which to reply to such observations.

    2.5 How is a trade mark adequately represented?

    If the application is filed electronically, a .jpg file is deemed sufficient for the sake of graphical representation. In the event of a claim of colours, a simple indication of such colour is considered sufficient. If the application is filed non-electronically, there are no specific rules to be followed: the reproduction of the trade mark shall be clear enough to understand what the scope of protection is.

    2.6 How are goods and services described?

    The UIBM accepts applications claiming a heading from the Nice Classification system; however, protection will be granted only for those terms that are covered literally by the meaning of the terms of the heading. The UIBM provides the applicant with a list of accepted goods, but also allows the description to be customised if necessary.

    2.7 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?

    An Italian trade mark registration grants the exclusive right to use the registered trade mark in Italy. Furthermore, due to the 1939 Convention of Friendship and Good Neighbourly Relations between Italy and San Marino, both states undertake to prevent in their respective territories, any usurpation or counterfeiting of trade marks regularly registered and protected in the other state.

    2.8 Who can own a trade mark in your jurisdiction?

    A trade mark can be registered by a physical person or company who uses it, or proposes to use it, in the manufacture or trade of goods, or in the provision of services.

    A trade mark may also be registered by agencies of the country, regions, provinces and municipalities, including with respect to distinctive graphical elements taken from the cultural, historical, architectural or environmental heritage of the corresponding territories. Please note that in the latter case, the revenues deriving from the use and exploitation of the trade mark for business purposes shall be used for financing institutional activities or for covering past deficiencies of the entity.

    2.9 Can a trade mark acquire distinctive character through use?

    Yes, through a secondary meaning. Italian law does not provide specific criteria to understand the duration or intensity of the use of a sign in order to acquire secondary meaning. However, the case law states that widespread use of the sign at the national and international level, as well as lasting advertising campaigns, may support the acquired distinctiveness of a trade mark. Please note that it is advisable to gather such proofs of use in a timely manner and before any proceedings.

    2.10 How long on average does registration take?

    It takes about a year-and-a-half, starting from the filing date, to register a trade mark.

    2.11 What is the average cost of obtaining a trade mark in your jurisdiction?

    The official fees for filing a trade mark in one class are 177.00 euros and 34.00 euros for each additional class.

    2.12 Is there more than one route to obtaining a registration in your jurisdiction?

    The routes to obtain a trade mark registration in Italy are:

1. filing a national trade mark application before the UIBM;

2. filing a European Trademark application before the EUIPO; and

3. designating Italy through an international trade mark application under the Madrid system.

   2.13 Is a Power of Attorney needed?

   Yes, if the applicant files the trade mark with the support of an agent.

   2.14 If so, does a Power of Attorney require notarisation and/or legalisation?

   No legalisation or notarisation is required; a simple signature is sufficient.

   2.15 How is priority claimed?

   Priority shall be claimed at the moment of filing and specifying the trade mark's data (such as country, application date and registration number). A certified copy of the prior application shall also be filed. Please note that priority can be claimed while filing the trade mark application or within two months from the trade mark application date.

   2.16 Does your jurisdiction recognise Collective or Certification marks?

   The Italian Code of Industrial Property recognises Collective marks but there is no reference - for the moment - to Certification marks. However, please note that European Union Directive n. 2436/2015 has expressly introduced Certification...