Registration protects the trademark over the entire Italian territory, the State of San Marino and the Vatican City.
Trademarks that can be registered
Any new trademark capable of being represented graphically may be registered as a trademark, providing it meets the requirements of novelty, distinctiveness and lawfulness, including names, drawings, letters, figures, sounds, three-dimensional trademarks, combinations of colors or specific shades.
Anyone interested in applying for a trademark may do so, including state, regional, provincial and municipal administrations.
Filing of application
The trademark registration application must be filed with the Italian Patent and Trademark Office (U.I.B.M.) and/or at the offices of the competent chambers of commerce for each region.
The application must include identification of the holder (and the holder’s representative if appointed), priority if any, reproduction of the trademark and a specific list of the goods or services for which the trademark will be used.
Duration and renewal
Registration shall be granted for a period of 10 years as from the application filing date, and may be renewed indefinitely for further 10-year periods.
Effects of application
Protection of the Italian trademark begins from the moment the application is filed.
Prior art search
A prior art search is highly recommended for identifying the existence of earlier trademarks before the trademark application is filed.
Since July 1, 2011 it has been possible to raise an objection to Italian registration applications.
The certificate of registration is obtained after 8/12 months, if the application is not rejected.
Classification of goods and services
The international classification of goods and services (Nice Classification) consists of a list of goods and services for trademark registration; it is divided into 45 classes. There are 34 classes of goods and 11 classes of services.
Use of registered trademark
Non-use of the registered trademark for 5 consecutive years may result in its cancellation.
The holder of an earlier trademark who has allowed for a period of 5 consecutive years the use of a mark subsequent to its registration may no longer request that this trademark be declared invalid, nor object to its further use.
Transfers and licensing
The trademark may be transferred or licensed in relation to all or a part of the goods/services for which it was registered.
Both trademarks still in the application stage and trademarks already registered entitle their holder to apply for customs protection. In other words, the proprietor of a trademark may request the seizure of goods deemed to infringe his/her rights directly from customs.