TM registration in the Republic of Italy is handled by the TM & Patent Office. TM regulation in the Italian Republic is done on the basis of the Industrial Property Code & international agreements & conventions to which Italy is a signatory.
Italy: Protection of Unregistered TMs
Unregistered TMs are protected on the basis of the Industrial Property & Civil Codes. Protection is provided:
- for owners of valid IP rights;
- against acts of unfair competition.
Protection is provided only for TMs used in the respective parts of Italy.
Italy: Protection of Foreign TMs
A foreign TM can be protected if its owner can prove that it’s known to the Italian public and that they have the invention of launching the relevant products on the Italian market.
Benefits of Registering a TM in the Republic of Italy
After registration, a TM:
- is protected all over Italy; unregistered TMs are only protected within the area of their use;
- is provided protection for five years, even if it isn't used;
- is protected from being confused or associated with other TMs; unregistered TMs are protected only on the basis of the Law on Unfair Competition;
- retains protection even if it loses its distinctive character; unregistered TMs simply lose protection;
- allows its owner to exercise rights in relation to similar TMs registered later; unregistered TMs cannot have any such protection.
Italy: Registration & Use of TMs
Anyone can register a TM in the Republic of Italy. To have their TMs registered, applicants aren’t required to do business. If a TM is well known, the name & right to its use belong to a person who created the reputation.
Words, names, drawings, letters, numbers, sounds, appearance of goods, packaging, combinations of colors & shades can be registered as TMs if they:
- help distinguish a product;
- describe a product in such a way that it can be precisely defined.
Registration of unconventional TMs in the Republic of Italy (e.g. fragrances & scents) is also possible. 3D marks can’t be registered as TMs.
Italy: Applying for TM Protection
- appoint a qualified representative;
- designate services/products & classes they belong to;
- pay fees;
- provide documentary proof that a TM acquired a distinctive character before an application was filed.
Registering a TM in the Republic of Italy takes about a year & involves making sure that a TM can be registered, that it’s different from other TMs & that it isn’t misleading & doesn’t violate the law. If registration is granted, TM protection takes effect from the moment a decision on registration is published in the registration authority’s bulletin. 3rd parties can contest registration of a new TM within ninety days. A newly registered TM can be used for sixty months after its registration. Using a TM in the Republic of Italy mustn’t be suspended for more than sixty months, otherwise registration can be revoked.
Protection is provided for 120 months & can be renewed for another 120 months. It’s possible to cancel registration at any time. Registering a TM online in the Republic of Italy is possible.
Italy: Protecting TMs on the Internet & Registering Domain Names
TM owners whose rights are violated on the Internet can file a lawsuit against the violator(s) as per the TM law, unfair competition law & other pieces of legislation. There’s a special agency responsible for resolving TM disputes in the Republic of Italy involving the .it domain name.
Contesting infringement of TM rights in the Republic of Italy requires filing a lawsuit with a civil court. Normally, resolving a TM dispute takes from twenty four to thirty six months. In particularly urgent cases, adjudicators may issue preliminary orders after the commencement of proceedings.
Decisions rendered by 1st instance courts can be appealed with the Appellate Court. The latter’s decisions can be appealed with the Supreme Court, but only if procedural or legal violations are committed.
Need more info on IP protection in the Italian Republic? Looking to protect a TM in the Republic of Italy? Why not contact IQ Decision UK?