All matters concerning TM registration in Italy are handled by the TM and Patent Office. The main legal source of TM regulation in Italia comes from the Industrial Property Code but also does not exclude international agreements and conventions.
According to the Industrial Property and Civil Codes, unregistered TMs can be protected too. Protection is given to the owners of valid IP rights and secures them against acts of unfair competition (only in the area of TM use). When it comes to foreign ones, once the TM owner is able to prove that the Italian public is familiar with their product and they are planning to launch the products in Italy, a foreign TM can be protected as well.
Benefits of TM registration
Registering a trademark in Italy provides the following advantages:
- Protection from being confused or associated with other TMs
- Protection in whole Italy for five years
- In case of losing its distinctive character, the TM keeps the protection (unregistered TMs lose it)
- The owners can exercise rights related to other similar TMs registered later.
Use of TMs
In Italy, there are no extra criteria about being an applicant for a TM – anyone can do it. The applicants are not even required to conduct the business. It is the reputation of the brand that makes a TM known and reserves the name and the right to use for the creator. There are many things that can be registered as TMs such as words, names, sounds, number, and many others. The registration is possible if those features make a product distinguishable and identifiable.
The first step is to start the application process. This requires the applicants to:
- Appoint a qualified representative
- Define what class of products or services their mark belongs to
- Settle the registration fees
- Provide official proof of their TM distinctiveness.
The process of TM registration in Italy typically takes about a year. This period is used to make sure that a TM really can be registered, compare it to the other ones, confirm that no laws are violated. Once the registration is granted, it comes into force from the moment of decision published in the registration authority’s bulletin. In case of any disagreements, third parties can challenge the new TM registration for 90 days. The TM protection can be used for 60 months. However, the protection period is doubled – 120 months and can be renewed for the same period of time.
It is interesting to note that the application can be canceled at any time. Or the whole process can be done electronically.
Experts from COREDO are skilled to provide you with more information on IP and TM protection in Italy and other European countries.