1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Italy. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. As discussed below, the legal benefits of registration may not be available otherwise. Furthermore, compared to the burden of proof needed to enforce rights in an unregistered trademark, enforcement of a registered trademark is less expensive.
3. What is registrable?
Any 搒ign?that can be reproduced graphically and is capable of distinguishing the goods and services of one person from another, e.g., words, names, devices, letters, numbers, certain three-dimensional shapes, colors, and sounds, is registrable.
4. Can a trademark be registered for retail and like services?
No. Retail and like services cannot be registered in the Italian Registry. They can, however, be registered as Community Trade Marks.
5. How are domain names protected?
Domain names are protected by registration of the domain with the Italian Domain Name Registration Authority on a first come, first served basis. Upon registration, if the domain registrant opts to accept arbitration, disputes may be put to the Italian Registration Authority Arbitration Board as a first route to dispute settlement. If registration of the domain name is in bad faith, recourse to a quasi-UDRP procedure administered by Italian arbitration bodies is possible. This route does not exclude the courts as an alternative. In general, the courts apply the same principles to domain names that are applied to trademarks. It is, however, advisable to consult a trademark attorney. No specific legislation is currently in force for the protection of domain names.
6. Should a trademark be searched before filing?
Yes. In Italy, the Trademark Office does not examine applications against prior marks (see question 17) and, therefore, a prefiling search by the applicant is recommended to establish whether valid rights in a mark may be secured. If the mark is to be used in many countries, a prefiling search also is recommended, at least in the major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home attorney or by directly contacting an Italian trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide to the trademark attorney one specimen of the mark, unless the mark can be represented in plain block capital letters, full details of the applicant, and a list of the goods/services to be covered. An executed power of attorney may be filed later.
9. Is local registration the only option, or are there international alternatives?
An Italian application only has effect in Italy. International and Community registrations are also available. Italy is a member of the Madrid Agreement and the Madrid Protocol (see the entry for the Madrid Agreement and Protocol).
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. It is only necessary to file one application and pay extra class fees.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within six months preceding the Italian application, the filing date of the home application can be claimed as the filing date in Italy. A Community or international registration can be based on an Italian registration (see the entries for the Community Trade Mark and Madrid Agreement and Protocol). Similarly, if an applicant抯 home country is a member of the World Trade Organization, it should be possible to claim the home filing date. Consult an Italian attorney.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within five years of the registration date. If not, the registration will become vulnerable to cancellation for nonuse.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of a different form would not affect the enforceability of the registration. However, there might be administrative problems if there is an attempt to renew the old registration by submitting prints using the slightly different mark.
14. Is there any advantage to using a trademark before filing an application?
Other than gaining acquired distinctiveness and thus avoiding the Trademark Office抯 objections, the advantages of filing outweigh early use. Although Italy recognizes unregistered trademark rights, which, if used substantially and nationwide, may prevail over later registrations, the prior user has the burden of proving exclusive rights in the mark by providing substantial evidence, which implies higher costs.
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone using or having an intention to use the mark, either directly or through licensees, may apply.
16. What information is first published about an application/ registration and when is it published?
There is no official trademark bulletin in Italy and, accordingly, there is no official publication of the application or registration.
17. What kind of examination (if any) will a new application undergo?
No official search or examination as to prior marks is conducted. The examiner conducts an examination as to the distinctiveness and deceptiveness of the mark and may reject the application on those grounds, but generally, the examination is limited to (fiscal) formal requirements.
18. What response to official objections is required?
The applicant is entitled to reply within 40 to 60 days, which is extendible for a longer period. If there is a final rejection, the applicant is entitled to appeal within 30 days.
19. How long is the registration process?
Currently, the registration process takes three years from the filing date. If the applicant is from a member country of the Madrid Agreement or Madrid Protocol, it is possible to apply for an international registration and designate Italy as a country where protection is sought, in which case registration would be granted in a few months with full effect in Italy.
20. What rights does an application confer?
The application can be used to challenge a subsequent conflicting application only before the courts. As of October 2003, opposition proceedings established by 1999 amendments of the law have not yet been implemented.
21. What is the legal effect of a registration?
The registrant can sue for infringement and cancellation of subsequent registrations and applications. The registrant can also apply for preliminary measures, seize counterfeits at Customs, and institute criminal proceedings.
22. Can an application be opposed or cancelled by third parties?
As of October 2003, opposition proceedings established by amendments of the law in 1999 have not yet been implemented. However, observations against third party applications may be filed on the grounds of nondistinctiveness or deceptiveness. New conflicting applications are usually challenged by prior applicants/registrants by warning letters requesting their withdrawal. A local attorney usually does this. If the subsequent applicant does not comply, a cancellation proceeding before the courts can be instituted.
23. Can an application or registration be assigned?
Yes. Applications and registrations may be assigned for all or some of the goods/services covered.
24. Must an assignment include goodwill?
No. The assignment may be with or without goodwill.
25. Does an assignment have to be recorded?
Recordal is not compulsory, but if the assignment is not recorded, a subsequent, recorded assignment may have priority.
26. Can an application or registration be licensed?
Yes. A license can be exclusive or nonexclusive, for both an application and registration, for all or some of the goods/services covered, and for all or part of the territory.
27. Does a license have to be recorded?
Recordal is not compulsory, but if the license is not recorded, a subsequent recorded license may have priority.
28. What is the territorial limit of a registration?
The territorial jurisdiction is the Republic of Italy and San Marino. This territorial jurisdiction is based on an agreement between the two republics. An Italian registration does not extend to the Vatican.
29. How long does a registration last?
The term of registration is ten years from the date of the application renewable for ten-year periods.
30. What is required to renew a registration?
The acting trademark attorney will send the power of attorney form, prepare and file the renewal application, and pay the renewal fees.
31. Is it necessary to indicate a trademark registration on goods or services?
Marking (e.g., 揗archio registrato?or ? is not compulsory but it is recommended. It is an offense to misrepresent that a trademark is registered.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes. The web address of the Italian Trademark Office is www.minindustria.it/dgspc/Uff_Brev/homepage.htm. |
