Articles

NATIONAL TRADEMARKS

The registration protects the trademark all over the Italian territory, in the State of San Marino and it may be recognized in the Vatican State. The application has to be filed at the Italian Patent and Trademark Office (UIBM) or through UPICA’s offices.

A national trademark may consist of any sign capable of being represented graphically, particularly:

 

  • Words (including personal names)
  • Designs
  • Letters
  • Numerals
  • Sounds
  • Shapes of goods or of their packaging
  • Colour schemes and shades

 

Ownership of the national trademark:

 

  • Any natural or legal person who is a citizen or resident of a member state of the European Union, or the Paris Convention or the World Trade Organization.
  • Administrations of the State, Regions, Provinces and municipalities.

 

Classification of goods and services:

  • The international classification of goods and services of the Nice Agreement applies. Each application may include multiple classes of goods and services.

 

Conditions for a national trademark to be registrable:

 

  • Graphic representation
  • Distinctive character
  • Lawfulness

 

Priority:

 

  • Within six months it is possible to claim the priority of an earlier Italian trademark in the application for a Community or International trademark and in any member state of the Paris Convention and of the WTO.

 

Examination of the application:

 

  • The national trademark enjoys protection from the day the application is filed. Once the registration application is filed, the trademark is examined on the base of the requirements of distinctiveness, descriptiveness, lawfulness and lack of deceptiveness. No clearance search is carried out by the UIBM to determine whether similar or identical prior trademarks exist. After the application examination, the trademark will be published on an official bulletin.

 

Opposition:

 

  • Beginning on 1 July 2011 it is possible to file oppositions against Italian trademark applications filed as from 1 May 2011. Third parties are allowed to file an opposition against the trademark registration within 3 months from its publication in the official UIBM Bulletin.
  • Further, third parties may file an opposition against International registrations designating Italy published in the WIPO’s Gazette as from 1 July 2011, irrespective of their filing date.

 

Registration:

  • Once these steps are overcome, the trademark will be registrable and its protection will start from the filing date of the application, not from its registration date.

 

Rights conferred by the registration:

 

  • The owner of a registered trademark has the right to use it to distinguish his goods or services and to prevent others from using it for identical or similar goods or services.

 

Duration and renewal:

 

  • An Italian trademark registration has a duration of 10 years running from the filing date. The trademark is the only title of  intellectual property meant to be potentially for life, since it is renewable for subsequent 10-year periods.

 

Use of the Italian trademark and reasons of lapse:

 

  • If the national trademark has not been used within 5 years from its registration, or if its use has been suspended for a continuous period of 5 years, within the national territory, it may be declared lapsed.