A brand is the business card of your products or services.
- The Italian Intellectual property laws
- Trade and service marks
- Trademark availability searches
- Domain names
- Intellectual Property Litigation
- Custom action against counterfeits
- Licensing and transferring IP rights
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
An English translation of the various laws was effected by our office and an updated version of each law is available upon request.
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 EUTM applications. There is a cooling off period and a subsequent adversarial procedure.
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.
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 opposition procedure.
This will be even much more important to file a EUTM 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 EUIPO 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, EUTM 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.
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.
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.
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
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.
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.