A global guide for practitioners
This article provides trademark practitioners and legal professionals with a simple guide to Italian trademark law, procedures and enforcement strategies.
This article first appeared in ‘WTR Yearbook 2017/2018: A global guide for practitioners, a supplement to World Trademark Review, published by Globe Business Media Group – IP Division’. To view the guide in full: http://www.worldtrademarkreview.com
The protection of industrial property rights in Italy is regulated by the Civil Code and the Industrial Property Code. The Industrial Property Code was brought into force in 2005 by Decree-Law 30/2005; it was subsequently reformed by Legislative Decree 131/2010. Further, the implementing regulations of the code were introduced by Ministerial Decree 33/2010. International law Italy is party to several international treaties, agreements and conventions, including:
• the Paris Convention for the Protection of Industrial Property Rights;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights;
• the Madrid Agreement and the Madrid Protocol on the International Registration of Trademarks;
• the EU trademark system; and
• the Nice Agreement on the International Classification of Goods and Services
The Industrial Property Code recognises “signs already known as marks” as valid IP rights which may bar the registration and use of subsequent trademarks. As a general rule, unregistered trademarks enjoy similar protection to registered trademarks. However, the following should be taken into account:
• Unregistered marks do not benefit from the presumption of validity; the burden of proof in civil proceedings is therefore higher than in the case of registered trademarks.
• Unregistered marks cannot form the basis of an opposition and can be enforced against subsequent registration only by means of civil action.
• The prior use of a sign which results in the sign becoming only locally well known does not exclude the novelty of a subsequent trademark.
• Locally well-known unregistered trademarks may still be used locally, regardless of the subsequent registration by a third party of an identical or similar trademark for identical or similar goods and services. However, this prior use does not affect the novelty and validity of the subsequent third-party registration. Further, according to Article 6bis of the Paris Convention, foreign registrations that are well known in Italy may enjoy protection as unregistered trademarks.
To establish unregistered trademark rights, use of a sign must be effective and continuous. Such use may affect the validity of a subsequent registration only if it leads the previously used mark to become more than merely locally well known.
According to Article 19 of the Industrial Property Code, any natural or legal entity that “uses or intends to use” a mark can apply for its registration in Italy, as long as the application is not made in bad faith. Marks can be used by either the applicant or an authorised third party, and use is considered genuine if it is true, continuous and effective. A representative of the rights holder requires power of attorney before filing; however, this power of attorney need not be notarised or legalised.
As a general principle, a trademark may consist of any sign that is capable of being represented graphically, as long as it is capable of distinguishing the goods and services of one undertaking from those of other undertakings. This includes words (including personal names), designs, letters, numerals, sounds, shapes of goods or their packaging and colour shades and combinations. The following are excluded from registration:
• signs which cannot be represented graphically;
• signs without distinctive character;
• signs which consist exclusively of generic indications of the goods and services or descriptive indications as to the type, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services or any other characteristics of the same;
• signs which consist solely of a shape that:
- is dictated by the nature of the product;
- is necessary to obtain a technical result for the product; or
- gives substantial value to the product;
• signs which are contrary to law, public order or decency; and
• deceptive signs – in particular, signs which mislead the public as to the geographical origin, nature or qualities of the relevant goods and services.
The above exclusions may be applied by the Italian Patent and Trademark Office (IPTO), whereas only third parties can contest the following:
• signs which may infringe third-party author rights, IP rights or any other exclusive rights;
• signs which are identical or similar to earlier registered trademarks (having effect in Italy), where this may cause confusion among the relevant public;
• signs which are identical or similar to unregistered trademarks, company names, company signs or domain names, provided that the conditions set forth above for unregistered signs are met;
• signs which are identical or similar to an earlier trademark which enjoys a reputation for dissimilar goods or services, where use of the latter mark without due cause would take unfair advantage of or be detrimental to the distinctive character or reputation of the earlier trademark; and
• signs which are applied for in bad faith.
Trademark applications must be filed with the IPTO. The first e-filing system was implemented in 2006 and a completely revised e-filing system was introduced in Spring 2015. The new e-filing system is yet to be fully implemented (eg, applications for international trademark registration still require paper filing), but the IPTO is working diligently to complete the process within the shortest timeframe possible.
Once the application is filed, the IPTO will perform an examination based on formal requirements and absolute grounds for refusal. If the application does not meet formal requirements or must be refused on absolute grounds, the IPTO will issue a formal notification to the applicant, which is granted a period of at least two months to complete or revise the application or file observations in response to the refusal. The IPTO will then examine the applicant’s response and decide whether to accept the application or reject it, either totally or partially.
If the application meets the requirements, it will then be published for opposition or observation by third parties.
The IPTO is not entitled by law to carry out any kind of search of prior rights; therefore, no official searches are available. An official online database is available at www.uibm.gov.it, but the search tools are very limited at present. However, with the implementation of the new e-filing system underway, the IPTO will soon be able to provide users with improved search tools.
The Industrial Property Code provides for an opposition system, which was implemented in 2010 and officially entered into force as of July 1 2011. Oppositions against Italian trademark applications must be filed within three months of publication of the application in the Official Bulletin of Trademarks. This period cannot be extended. Oppositions against Italian designations of international registrations must be filed within three months of the first day of the month following that in which registration of the international application is published in the World Intellectual Property Organisation Gazette of International Marks. This period cannot be extended. A notice of opposition can be directed against a single application and can be based on the rights included in Articles 8 and 12 of the Industrial Property Code, namely:
•earlier trademarks that have been applied for, have been registered or have effect in Italy at the time of filing of the contested application;
• portraits and personal names to which the applicant of the contested mark has no rights; and
• well-known signs – namely:
- names of persons;
- signs used in the fields of art, literature, science, politics or sports; and
- designations and acronyms of events and those of non-lucrative entities and associations, including the relevant emblems.
Unregistered trademarks, company names, domain names, well-known trademarks under Article 6bis of the Paris Convention and reputation claims cannot be enforced through opposition. These can be enforced only through invalidation actions. A notice of opposition must be filed with the IPTO in writing. The notice must be written in Italian and include all required documents. An opposition fee of €250 (plus postage) must be paid before filing the notice. The notice must be submitted to the IPTO through the new e-filing system. If a representative is appointed, power of attorney is required; however, the power of attorney need not be notarised or legalised.
The notice will not be accepted if it is filed by a person which is not entitled to do so. The Industrial Property Code considers the following as legitimate opponents:
• applicants and holders of earlier trademarks (under Article 12);
• authorised exclusive licensees of earlier trademarks (under Article 12); and
• persons, entities and associations that hold relevant rights (under Article 8).
If the opposition is accepted, the IPTO will notify the applicant of the contested mark (the first communication). The notification will be issued within two months of the expiry of the opposition period. The parties then have a twomonth cooling-off period in which they may reach an amicable settlement, which may be extended by joint request of the parties by up to 12 months from the date of receipt of the first communication. If an agreement is reached within this period, the parties must inform the IPTO. Otherwise, the opposition enters the adversarial stage. Within two months of the expiry of the cooling-off period, the opponent may file additional supporting documents or arguments, which the IPTO will forward to the applicant, setting a term for filing its observations. Within this term, the applicant may also request the opponent to submit proof of effective use of the enforced earlier trademark, if it was registered more than five years before the date of publication of the contested application. Evidence of effective use must be filed within 60 days of the relevant notification (this term may be extended up to six months). At the end of the adversarial stage, the IPTO will decide on the opposition, either refusing the contested application (in full or in part) or rejecting the opposition and awarding costs to the winning party (which may consist of the opposition fee and up to €300 of professional fees). The losing party may appeal to the Board of Appeal within 60 days of notification of the IPTO decision. If, after making all efforts provided by the law, the IPTO cannot serve the applicant with the notice of opposition, the opposed application will be rejected ex officio.
In the case of an opposition against the Italian designation of an international registration, the IPTO will issue a provisional refusal, setting a three-month term for the applicant to appoint an Italian representative to defend the designation. If no representative is appointed, the provisional refusal becomes final and the designation is rejected with no further action required from the opponent.
Where no objections are raised by the IPTO and no third-party oppositions or observations are filed, an application can mature to registration in approximately nine to 12 months. A trademark is valid for 10 years from the filing date and can be renewed – for all or part of the originally claimed goods – for unlimited subsequent 10-year periods. There is also a grace period of six months after the official deadline, provided that the renewing party pays a surcharge. Renewal registrations are assigned new renewal application and registration numbers and a renewal certificate is issued within a couple of months of the renewal date.
Removal from register
Surrender: A trademark holder can always surrender its registration. Surrender must be recorded on the register by means of an appropriate declaration (subject to fiscal registration).
Revocation: If a trademark is not put to genuine use for five consecutive years after registration, it becomes vulnerable to revocation for nonuse, which may be filed by any interested party. If use of the mark begins or resumes after the five-year period of non-use but more than three months before the claim for revocation is filed, the registration cannot be revoked, except in the case of rights in the trademark acquired by third parties through filing or use.
Invalidation: After registration of the mark, holders of conflicting earlier rights or any interested party (on the basis of absolute grounds for refusal) may file a claim for its invalidation. Invalidations are civil proceedings and must be filed before an IP court (tribunale delle imprese). The timeframe from filing of the claim to judgment may vary depending on the complexity of the case, but the average timeframe is two to three years.
The competent courts for any IP matter – involving registered or unregistered rights – are the tribunale delle imprese (enterprise tribunals): 21 highly specialised sections of the civil courts (approximately one for each Italian region). Where one party is a foreign enterprise, competence is limited to 11 of these venues, depending on the domicile or head office of the Italian counterparty of the suit.
In cases of either imminent or ongoing violation of an IP right, the rights holder may request the IP court to grant provisional remedies.
The main remedies that can be requested are:
•seizure (of products, tools and production plants, accounts and invoices and advertising materials);
• description (ie, inspection of products, production plants, accounts, advertising materials and any associated documents in order to collect documentary evidence of the infringement and the extent thereof); and
• injunction (enforceable at the infringer’s premises, those of subsidiaries and warehouses, and against third parties not identified in the petition).
The average period from filing of the petition to grant of the remedy is one month. Regarding compensation for damages, Italian judges usually take into account all appropriate factors, such as negative economic consequences – including the lost profits of the rights holder and unfair profits made by the infringer – and moral prejudice caused to the rights holder. The infringer can be forced to return all profits earned. According to Articles 473 and 474 of the Criminal Code, the infringement of a registered IP right so as to create the risk of confusion among the public is a criminal offence. Public prosecutors can therefore prosecute the felony independently if there is public deception. Consequently, even where it is advisable, it is not strictly necessary to file a criminal complaint. Article 517ter of the Criminal Code applies where the infringement does not involve an actual risk of confusion among the public. In this case, the rights holder must file a criminal complaint.
Ownership changes and rights transfers
There are no specific requirements in Italian law to finalise an assignment, insofar as documents are concerned. However, an assignment must take written form in order to be recorded in the Trademark Register. It may be recorded by means of the original, notarised assignment deed (foreign deeds must be legalised and include a sworn Italian translation), or by means of a simplified declaration stating that the title has already been assigned. The declaration must be executed by both parties, but there is no need for notarisation or legalisation of signatures. Before recording the assignment with the IPTO, fiscal registration of the assignment deed or declaration is required. It takes approximately one year for the assignment to be recorded in the register, but the assignment is effective as of the date of filing of the petition.
A merger is recorded by means of a petition filed with the IPTO and a certificate proving the merger, issued by the Commercial Registry or other competent authority. If the document is in a foreign language, an Italian translation must be provided. Official fees must be paid, which vary depending on the number of titles against which the merger is recorded. Although the merger is not immediately recorded in the register, it is effective as of the date of filing of the petition.
Change of name or address
A change of name or address is recorded by means of a petition filed with the IPTO. A power of attorney is required, but there is no need to provide additional documents. In contrast to previous practice, the current e-filing system does not allow for a petition for a change of name or address to be included in a renewal application. These changes should be recorded before proceeding with the renewal.
Trademarks can be the object of both exclusive and non-exclusive licences, which can relate to all or some of the goods or services protected by the registration. No particular forms or formalities are required. However, according to Article 23.4 of the Industrial Property Code, the licensing of a trademark must not mislead the public as to the essential characteristics of the goods and services. Recording a licence in the Trademark Register is not compulsory, although it is advisable for the sake of public advertisement. Effective and continuous use of a trademark by a licensee is considered genuine for the purpose of use requirements.
Under certain circumstances, the Industrial Property Code permits cumulative and simultaneous protection of an item by trademark, design and copyright. In particular, logos may be protected as both trademarks and designs. The shapes of products and their packaging, as well as designs, may enjoy both design and 3D trademark protection, provided that they fall within the limits outlined above for shapes. Copyright protection may also be invoked for the artistic value of a logo or the item itself. Utility patent protection may also be considered in some cases.
The enforcement measures specified above can be applied in case of the unauthorised use of an IP right as a domain name, metatag or hyperlink. In addition to an injunction prohibiting the use of an unlawful domain name, the judicial authority may provisionally order the transfer of that domain name to the rights holder under certain circumstances (eg, payment of a bond), according to Article 133 of the Industrial Property Code. The authority that administers domain names, .IT Registry, provides a list of centres for the resolution of domain name disputes.