Trademarks

The italian intellectual property laws

A diversified range of provisions and regulations

The Italian laws governing the various aspects of intellectual property underwent a radical modernization in the recent years and this process is still going on. Italy is a member of practically all existing International Conventions in the field of Intellectual Property such as:

  • Paris Union Convention
  • Strasbourg Agreement concerning the International Patent Classification
  • Budapest Micro Organisms Treaty
  • European Patent Convention (EPC)
  • Patent Cooperation Treaty (PCT)
  • Madrid Agreement and Madrid Protocol for the International Registration of Trade Marks
  • Nice Agreement for the International Classification of Goods and Services
  • European Community Trade Mark Convention
  • Locarno Agreement for the International Classification of Industrial Designs
  • Hague Agreement for the International Registration of Designs
  • International Union for the Protection of New Varieties of Plants (UPOV)
  • Berne Convention for the Protection of Literary and Artistic Works
  • Universal Convention for the Protection of Literary and Artistic Works
  • Hague Convention abolishing Consular Legalizations

Italy has implemented the various EEC Directives and Regulations in this field, such as the Regulations concerning the Supplementary Protection Certificates for Pharmaceutical and Plant Protection Patents, the Software Protection, the Protection of Semiconductor Chip Design, the Protection of Appellations of Origin. Italy is also a member of the World Trade Organization (WTO) and has amended the I.P. laws to harmonize them with the compulsory provisions of the Agreement on Trade Related Aspects of Intellectual Property (TRIPs).

From 2005 the Industrial Property in Italy is regulated by the Italian Code of Industrial Property. This code unified into a single law all the provisions concerning patents, models and designs, trademarks, and related special technical fields while copyright and unfair competition remain covered by specific laws.

When in the following pages there is reference to Legislative Decree No. 30, this is the official name of the Italian Industrial Property Code, that was recently amended together with the corresponding Implementing Regulations.

 

Trade and service marks

Legislative Decree No. 30 of February 10, 2005

The cited amendment of the Italian Trade Mark Law largely harmonized it with the corresponding EU Regulation, so that many of the peculiarities of the old Italian law were amended or repealed.

However, also in this occasion the Italian Patent Office was not able to organize a novelty examination. Therefore it is advisable to conduct always an availability search before filing a trade mark in Italy, as it is possibile to find several identical or similar marks for identical or similar goods or services.

The applications are examined for absolute grounds of refusal, such as lack of distinctiveness, and the criteria followed by the Examiners are often unpredictable.

At last, also Italy introduced the opposition proceedings. Any holder of a trademark right in Italy can file opposition against an Italian national trademark application or WIPO International registration designating Italy and the procedural rules are quite similar to those applicable for CTM applications. There is a cooling off period and a subsequent adversarial procedure. For further details of the Italian Trademark opposition proceedings, please see the corresponding paragraph in the news.

Unregistered trade marks enjoy limited protection. It is indeed necessary to prove a general prior public use through the entire national territory in order to invalidate a subsequent registration by another party. Otherwise prior use in a limited territorial area entitles the prior user to continue his activity within the same territorial and quantitative limits.

Assignment of a trade mark is possible without the goodwill and/or the business branch, as well as only for a part of the goods or services originally listed in the application or registration.

To obtain protection in Italy by filing a Community Trademark Application, see the relevant page.

Community trademark applications

From the 1st April 1996 the Community Trademark Office (OHIM) in Alicante is operative and this system of granting a unitary trademark registration valid in all the member countries of the European Union gained a huge success, higher than every expectation.

We remind you that Italian is one of the five official languages of the OHIM, but the multilingual staff of our office is ready to handle the applications in any of the official languages, namely English, French, German and Spanish besides Italian.

We are charging a very moderate professional fee for filing a Community Trademark application and transmitting the Search Reports without comments, of course in addition to the reimbursement of the official fees paid.

Then, reporting official objections, more particularly those concerning the absolute grounds of refusal, as well as studying the search reports and giving an opinion on their results, and filing the relevant responses, will be charged separately on a time basis.

There is a great deal of doubts on the reliability of the OHIM searches conducted by the national offices of the member countries, excluding Italy, France and Germany. It is well known that these three major countries decided to refrain from conducting any search in their own national registers.

Indeed the Community Office pays a small fee for this search to each national office and we are rather doubtful that for such an amount one can obtain a complete availability search listing identical, equivalent and similar marks, for identical or similar goods and/or services, especially even if comprised in adjacent classes.

Therefore we are of the opinion that a preliminary search through the usual data bases is highly advisable and even indispensable for Italy, France and Germany.

We believe that it is also useful to keep a watch on new Community Trademark Applications to check if third parties are seeking to register marks similar to your own trademarks.

It is however always possible to obtain protection of a trademark in Italy through a national registration and an international registration at WIPO.

If you have questions about the new system, please do not hesitate to contact us and we will be pleased to give further advice on the new system and to assist you in filing, prosecuting and registering your trademark applications at the OHIM.

Trademark availability searches

In order that your trademark mature into registration.

As you know to file a national application in Italy it is really important to have the best assistance to choose the right trademark for your client also in view of the now enacted opposition procedure.

This will be even much more important to file a CTM registration that covers 27 countries of the European Union and in each country third parties can oppose to your trademark a prior trademark registration for same or similar goods or services ,even a national registration.

So the importance to prevent the filing of a failure trademark is vital for your client business.

Only an Attorney that is always updated can search and identify the prior trademarks that could be considered an obstacle to your registration and suggest a way to overcome it.

For this reason our office conduct all the word trademark searches through their professionals in order to provide a trademark availability search in a little time and aimed at your specific needs .

We provide word and figurative availability trademark searches and of course identity searches in Every European members country, including CTM and International database and thanks to our multinational network of almost every country where it is possible to file a trademark.

It is of course also possible to conduct a search to locate all the marks filed in the name of persons, firms, organizations or companies

Every trademark search includes our report with the possible actions can be taken together with our registrability advice.

We will be happy to provide all the information you need and detailed estimate.

Please ask us information about our flat fee for conducting a trademark availability search covering Italian National, CTM registrations, International Registrations and the single national countries of the EU. For instance at least the ones where usually oppositions are filed: Germany, Spain, BeNeLux, UK and France.

 

Domain names

Internet is nowadays one of the essential means to market products and services and the registration of a domain name constitutes a street window to reach an increasingly broad range of potential consumers.

The Italian Industrial Property Code explicitly recognizes domain names as distinctive signs. Our firm handles also the registration of Internet web sites, even as national and foreign Top Level Domains including several Asian countries, and their configuration too, if required.

Nice classification

under the Nice Agreement – Tenth Edition

 

Goods

  1. Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
  2. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
  3. Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
  4. Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
  5. Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
  6. Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
  7. Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.
  8. Hand tools and implements (hand-operated); cutlery; side arms; razors.
  9. Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
  10. Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
  11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
  12. Vehicles; apparatus for locomotion by land, air or water.
  13. Firearms; ammunition and projectiles; explosives; fireworks.
  14. Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
  15. Musical instruments.
  16. Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.
  17. Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
  18. Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.
  19. Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
  20. Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
  21. Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
  22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
  23. Yarns and threads, for textile use.
  24. Textiles and textile goods, not included in other classes; bed covers; table covers.
  25. Clothing, footwear, headgear.
  26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
  27. Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
  28. Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
  29. Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.
  30. Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.
  31. Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.
  32. Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.
  33. Alcoholic beverages (except beers).
  34. Tobacco; smokers’ articles; matches.

    Services

  35. Advertising; business management; business administration; office functions.
  36. Insurance; financial affairs; monetary affairs; real estate affairs.
  37. Building construction; repair; installation services.
  38. Telecommunications.
  39. Transport; packaging and storage of goods; travel arrangement.
  40. Treatment of materials.
  41. Education; providing of training; entertainment; sporting and cultural activities.
  42. Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
  43. Services for providing food and drink; temporary accomodation.
  44. Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
  45. Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

Filing requirements for Italy

National Patents

  1. Unlegalized power of attorney (term for late filing: 2 months).
  2. Abstract, description and claims in Italian, or to be translated into Italian.
  3. Declaration of inventor signed by inventor(s) and applicant(s); however, the form can be filled-in and signed by local agent (term for late filing: 2 months).
  4. Drawings, size A4 – 210 x 297 mm (term for late filing: 2 months).
    In Convention cases only:
  5. Certified copy of foreign application(s) (term for late filing: 6 months); claiming multiple or partial priorities possible. A word by word Italian translation must be attached thereto.
  6. Assignment of priority rights to be executed before the filing date in Italy, only if the applicant in Italy is other than the applicant abroad. When the applicant in Italy is one of the original joint applicants, the assignment is no longer required. Notarization required. Consular legalization required unless for countries having ratified The Hague Convention of October 5, 1961 on the abolition of legalization of documents, in this case legalization by “Apostille” is required (term for late filing: 6 months).

 

Translation of European Patents (Validation)

  1. One copy of the specification, claims and drawings, if any, in the language of the proceedings (English, German or French).
  2. Copy of the decision to grant the European patent or to maintain it in amended form after opposition and/or appeal.
  3. Power of attorney, in Italian, simply executed by the Patentee (term for late filing: 2 months).
    Translation of the Claims of European Applications:
    The above items 1, 3 and 4 for the translation of granted European Patents are required also to file the translation of the claims for obtaining the same provisional protection accorded to the Italian national patent applications. Copy of the first page of the published European patent application (containing the abstract, the translation of which is required by the Italian Patent Office for information purposes only).

 

PCT Applications

Italy is a member of the Patent Cooperation Treaty and the Italian Patent Office is only a Receiving Office. However, it is not possible to enter the national phase in Italy from a PCT application filed in another country. For more details see under “Patents of Invention“.

 

Trademarks

  1. Unlegalized power of attorney (term of late filing: 2 months).
  2. A good print of the mark, not required for word marks.
  3. Detailed list of goods and/or services to be covered.
    For Convention cases:
  4. Certified copy of foreign trade mark application (term for late filing: 6 months). A word by word translation into Italian must be attached.
    For Community Trademarks:

    The above documents sub point 1. Two prints of the mark are sufficient. For on-line filing we need to receive the device in “.jpg” format. To claim seniority of a prior national registration in a EU country, complete copy of the registration and of any renewal thereof.
    NOTE
    : Both the Italian national law and the Community Trademark Regulation allow to cover any desired number of classes of goods and/or services with a single application.

 

Designs and Models

  1. Unlegalized power of attorney (term for late filing: 2 months).
  2. Specification in Italian (for designs a description of the drawings is generally sufficient), or to be translated into Italian.
  3. Drawings (prints, photographs or any other reproduction). Size A4 – 210 x 297 mm. In the case of textile products, e.g. 4. fabrics, samples can be filed instead of representations.
    In Convention cases only:
  4. Certified copy of the foreign patent or design application(s) including drawing or reproduction and specification, if any (term for late filing: 6 months). A word by word Italian translation must be attached thereto. Claiming multiple or partial priorities possible.
  5. Assignment of priority rights (see under Patents, point 6).
    NOTE
    : for multiple deposits the order in which the drawings are to be submitted should be indicated.
    For Community Designs:

    The above documents sub points 1 and 4 (Certified copy of design application in Convention or Exhibition cases). Claiming multiple or partial priorities is possible. Drawings or photographs (ideal size of views: 8 cm x 16 cm) of a professional quality with no symbols (arrows, letters, etc.).

 

GENERAL REMARKS: all the 2 months terms regarding Italian applications can be extended for an additional term of about two months by filing a proper petition, or possibility to a maximum of 6 months from the original filing date or date of an official communication.

 

Semiconductor Chips

  1. Documentation allowing identification of the topography sought to be protected; such documentation must be submitted in A4 (210 x 297 mm) format or in another format that can be folded to A4 format and may comprise drawings or photographs showing the configuration of the layers of the semi-conductor product, or the masks or parts of masks for the manufacture of the semi-conductor product or its individual layers. An optional description may be filed allowing a better identification of the topography or the most characteristic parts thereof as well as any other document adapted to identify it.
  2. Declaration certifying the date of the first commercial use of the topography and the legal relationship between applicant and person who carried out the first commercial use, if other than applicant.
  3. Designation of the author(s) of the topography.
  4. Power of attorney.

 

Plant patents

  1. Full name of applicant(s), his nationality and domicile, as well as title of application which should comprise the genus or the species of the new variety and, in a precise and concise form, the main distinctive features thereof.
  2. The designation proposed to identify the variety (plant denomination). In case said designation has already been accepted in another member state of UPOV the same designation must be used.
  3. The designation of the breeder. If the breeder is the only inventor, this must be stated in the application and no separate breeder designation form must be filed.
  4. A declaration providing i.a. information on examination of corresponding applications in other countries.
  5. Power of attorney.
  6. Specification, claims and abstract.
  7. Drawings or photographs in triplicate.
  8. If priority is claimed, priority documents with the Italian translation and Priority Assignment with same rules as for patents.
  9. Any other document or information that applicants consider useful for examination of the application.

 

Intellectual property litigation

Here skilled strategy is a must

In absence of opposition or invalidation proceedings to be held before the Patent Office, all disputes in Italy for intellectual property matters must be brought before the courts.

A restricted number of specialized courts handle the lawsuits related to the intellectual property laws, being entitled to issue decisions in these matters. These decisions can however be revised by a little number of Courts of Appeal.

A useful provision of the Italian I.P. laws is the rather quick and easy way to obtain a court order allowing the plaintiff to inspect and describe the products or processes of the alleged infringer so as to obtain the proof of the infringement. The plantiff can obtain an interlocutory injunction stopping the production and sale of the infringing goods but he must then start a regular lawsuit to validate the injunction.

The judges are assisted by neutral experts that will give them technical assistance during an expertise in which the parties have the right to attend with ex-parte experts who are submitting arguments in support of their own party.

Our firm has a wide reputation in assisting the trial lawyers in the course of a litigation. Our members are frequently involved in technical expertises before the courts and inspections of infringing enterprises ordered by judges, seizure of counterfeited goods and all kinds of interlocutory measures ordered by the courts.

Unfortunately there is a huge backlog of lawsuits in the Italian courts so that a decision in the first instance can be expected only 3-4 years from the date of serving the summons writ, and approximately the same time can be estimated for the appeal stage.

Our firm is an active member, since its foundation, of INDICAM, the Italian Anti-Counterfeit Committee of the Brand Names, and assists the Clients in the civil and criminal actions against counterfeiters of their goods and/or services and infringers of their rights.

PATENT SEARCHES

Quite often a patent dispute or litigation requires name index and/or subject matter searches at various levels and a corresponding examination of the results and related opinion. Our firm is well known for a quick and reliable service for any kind of search for all categories of IP rights.

 

Customs action against counterfeits

Holders of Intellectual Property rights may request customs authorities to prevent the entry into member states of the European Union of goods infringing his rights. The applications for customs action may be based on any kind of IP right covered by the relevant laws of the country involved.

The application for customs action must be accompanied by proper documentation describing his goods suspected to be infringed and any pertinent information about the provenance of the infringing goods and their recipients.

If such goods are found, the customs office suspends the release of the goods and invites the holder to inspect the goods within 10 days. If the holder recognizes the goods as counterfeited, criminal proceedings are started automatically, otherwise the goods are released.

The application for customs action has a one year duration and its renewal is possible. Our office is ready to assist the holder in these proceedings.

Licensing and transferring IP rights

Once an IP right is obtained, often such a right is involved in a commercial transaction. One possibility is that the owner grants to another party an exclusive or non-exclusive license to make, use and/or sell the relevant products. Another possibility is the assignment of his rights to another party.

Our firm is frequently involved in this kind of transactions, which are very often complex and required deep knowledge of IP, commercial, corporate and fiscal laws and regulations.

Our firm can assist the clients in the negotiations, drafting the contracts, registering and recording the contracts at the corresponding governmental offices in Italy and abroad.

In case of disputes arosen during the file of the contract, our office can assist clients in extrajudicial proceedings (mediation and arbitration) and lawsuits.