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Trademark in Italy

Definition

A sign that can be represented graphically, such as: words, including the names of people, drawings, letters, figures, sounds, form of the product or its packaging, the combinations or shades of colour, which is used by a body or a Company to distinguish itself, the products and/or services which it produces, and/or markets.

Rights

The trademark is the sign which distinguishes the Company or body, or its product, or its services from the Company or body or products and/or services of the competition. The trademark therefore has a distinctive function, that is, it allows the public to identify the provenance of products and services; the trademark also represents a guarantee of uniform quality and communication. The registration of a trademark confers on the holder in the State where it is granted the absolute right to use the trademark to distinguish the products or services manufactured or offered for sale or supplied for which the sign has been registered.

The owner of a registered trademark can therefore forbid third parties to use trademarks which are identical to his own for products or services which are identical to those for which the trademark is registered. He can also forbid the use of trademarks which are identical or similar to his own registered trademark for products or services which are identical or similar. The owner of a registered trademark can also forbid third parties to use trademarks identical or similar to his own regarding not only goods identical or similar to those distinguished by his trademark, but also regarding different goods, if his trademark is renowned in the country where registration has been granted. In the same way, he can forbid third parties to use the trademark if this allows them to take unfair advantage of the distinctive character or renown of the trademark.

Provided that the use conforms to the principles of professional behaviour, the owner of a registered trademark cannot forbid third parties to use, in the course of their business activities:

  1. their name and address;
  2. indications relating to the type, quality, quantity, destination, value, geographic origin, period of manufacture of the product or of the rendering of the service or other characteristics of the product or the service;
  3. the trademark if it is necessary to indicate the use of a product or a service, particularly as accessories or spare parts. The owner of a registered trademark cannot forbid the use of the trademark for products on sale in the European Union with that trademark by the owner himself or with his agreement (parallel imports).

The trademark must be requested for products or services included in classes defined inside a specific international classification. It is important, when choosing the products or services for which one is asking to protect the trademark, to include those which are similar and those which find an outlet in the same commercial lines, as a safeguard. For registration, the same rules apply as those which apply to inventions. In Italy a trademark lasts 10 years from the filing date and it can be renewed an unlimited number of times.

Ownership

Anyone who uses or proposes to use a trademark, in the manufacturing or commerce of products or in the rendering of services of his own company or companies which he controls, or which use the trademark with his agreement, can obtain the registration of a trademark. Anyone may request the registration of a trademark, either an individual person or a juridical entity. It is important that the applicant intends to use the trademark within the term allowed by the law (5 years from the date of registration). Non-use will cause the trademark to be invalidated. The lapse must be proved by the interested third party. The administrative bodies of the State, the Regions, the Provinces and the Town and City Councils can also register their trademark.

Types

Trademarks are divided into the following types:

  1. product: when they are adopted by a company to distinguish its own products; it should be remembered that a product trademark can never be suppressed by the trader, when the producer has applied it;
  2. merchandise: when they are adopted by the commercial body to distinguish the goods sold through their own commercial channels, whether they be a shop or a warehouse;
  3. service: when they are intended to distinguish, for example, the activities of Companies operating in the following fields: transport and communication, advertising, construction, insurance and credit, shows, radio and television, treatment of materials and similar. A trademark can only distinguish the services which a company renders to third parties.

There are also collective trademarks which are granted to those whose purpose it is to guarantee the origin, nature or quality of certain products or services. These trademarks do not belong to those who use them, but to any body, normally organized as a Company, which applied for them and which concedes the use of them to whomsoever possesses the necessary pre-requisites and respects the conditions of use, which must be established and filed together with the trademark. The types of trademark identified above must not be confused with some types of signs which derive from specific European or Italian laws introduced to protect agricultural and food products. These are specified hereafter. In this context, the EEC Regulation n. 2081/92 created the following trademarks:

  1. DPO - Denomination of Protected Origin
    This identifies products which are transformed, processed and prepared in a determinate geographical area. Examples include San Daniele ham, Sardinian “pecorino” cheese and some olive oils.
  2. IGP – Indication of Geographical Protection
    This includes products of which at least one of the stages of production, transformation or processing takes place in a determinate geographical area. Examples include: Pachino tomatoes and Colonnata pork fat.
  3. TSG – Traditional Speciality Guaranteed
    This identifies products without a specific origin but characterized by a traditional composition of the product or a traditional method of production. Typical example: mozzarella.

In Italy, before the above EEC Regulation, norms were already in force to protect specific agricultural and food products. Since the Regulation, the national certification system is used exclusively for wines. In particular:

  1. DOCG - Denominazione di Origine Controllata e Garantita (Denomination of Controlled and Guaranteed Origin).
    This is given to all wines which, apart from being quality wines, must be bottled in the area where they are produced and in containers with a capacity of less than five litres.
  2. DOC – Denominazione di Origine Controllata (Denomination of Controlled Origin).
    This indicates quality wines originating from limited areas which are referred to in the name of the wine. Wines with this denomination must also respect specific oeno-chemical and organoleptic characteristics, laid down by production Regulations.
  3. IGT – Indicazione Geografica Tipica (Typical Geographical Indication).
    This indicates table wines from extensive geographical areas, with less restrictive oeno-chemical and organoleptic characteristics than those laid down for DOC wines.

Classification

It is possible to register as a trademark all those signs which can be represented graphically and which, at the moment of filing, are not in general use or already known as distinctive trademarks of products or services of the same kind or a similar kind made, put on sale or supplied by third parties.

Visible signs

Which can be, by way of example:

  • denominative
  • figurative
  • complex
  • shape or three-dimensional
  • colour
  • movement
  • position

Their main characteristic is that they are perceived through sight.

Trademarks can be:

  • Denominative trademarks
    Denominative trademarks are those made up of imagined words, patronymics, geographical names, social titles, acronyms, letters of the alphabet, numbers, etc.
  • Figurative trademarks
    Figurative trademarks are those made up of emblems and colours and include more elaborate representations, such as cartoons, labels, portraits, etc.
  • Complex trademarks
    Complex trademarks are those made up of figurative and denominative elements.
  • Shape or Three-dimensional trademarks
    Three-dimensional trademarks are the shape of the products and their packaging. It should be remembered that a trademark for the shape of a product cannot be granted indiscriminately, but only if the shape is unusual, arbitrary or imaginative. The shape must not have any aesthetic or functional purpose, or any particular use; in these last cases, the protection is obtained by a patent of industrial invention, utility model, or by registering models.
  • Colour Trademarks
    The trademark of colour can consist of a combination of colours or a single colour. It is important to specify the shade of colour with reference to a code of colours recognized on an international level (e.g. PANTONE). The distinctive character with respect to the service or product it intends to distinguish is required. It is also important not to confuse the trademark of colour with a trademark that is simply coloured.
  • Movement Trademark
    The term “movement trademark” was introduced from German jurisprudence concerning trademarks. The subject of the protection of a movement trademark, as a justification of the trademark, does not consist solely of a concrete succession of images, by also a standardized movement. They are rather rare.

Invisible signs

These signs can be recognized by senses other than “sight”, and although they exist, they are difficult to deal with; they can be, by way of example:

  • Sound
  • Scent
  • Taste
  • Tactile (or sensation)

The trademarks could be:

  • Sound trademarks
    Sound trademarks are divided into: Musical: for example musical motifs that are filed through the pentagram; Non-musical: sounds that cannot be represented through the pentagram (for example the lion’s roar) which can be registered in some States, by filing the sonogram and an MP3.
  • Scent Trademark
    Scent trademarks can only be properly protected if they can be reproduced graphically, for example by a chemical or galena formula, or descriptively or by systems of analysis. In reality there are grave doubts on whether such trademarks can be registered since at the moment there is not even an international classification of scents that would allow an unequivocal identification of the scent, and therefore it is problematic to distinguish said trademarks precisely.
  • Taste trademarks
    These concern certain flavours relating to products that can be ingested. They are trademarks which for the moment remain theoretical. The problems are the same as those for scent trademarks; moreover, since taste is only appreciated after entry into the mouth, the consumer is not able to orient his choice of purchase before the trademark has performed its function.
  • Tactile (or sensation) trademarks These also belong to the category of theoretical trademarks. For filing them, a detailed description of the sensation would be necessary. No such trademarks have yet been registered.

For the so-called “invisible” trademarks, there are problems of harmonization with the various national legislations (both with regard to the requirements of representability, and with regard to the supports accepted by the various Offices). Many countries have circumscribed the area of signs that can be registered as a trademark only for those that can be perceived visually, or are susceptible to graphical representation.

Requirements for registration

In order to be eligible for registration, the trademark must possess a distinctive abstract feature which is expressed by the overall impression which it gives to the consumer of average diligence and intelligence.

The trademark must be new, that is, it must not be anticipated by other identical or similar trademarks already valid in the countries where registration is requested. Novelty is evaluated with reference to the classes of products and services shown in the specific international classification; it is also evaluated according to the likeness of the products and the services and the type of customer for which they are intended. Before filing a trademark, it is always best to carry out a prior search to determine its novelty. However, a prior search can never give an absolute guarantee because sources are never completely updated, and because there may be a “de facto” trademark. Prior searches made via the Internet are not effective, in most cases.

It is not possible to register signs made up exclusively:

  1. of general denominations of products or services,
  2. of descriptive indications which refer to the products or services.

The following cannot be the subject of a registered trademark: words, figures or signs contrary to law, public order or morals. This rule also concerns obscene drawings or words which are offensive to public decency, or intended to discredit national institutions, religious sentiment, and the symbols of the nation.

The following cannot be the subject of a registered trademark either: coats-of arms, flags, official emblems and other signs considered in International Conventions in force, the coats-of-arms and heraldic emblems of public interest, unless the competent Authority has authorized the registration.

Names of people, signs used in the artistic, literary, scientific, political or sporting field; denominations and acronyms of performances, names of associations and public authorities, if well-known, can be registered or used as a trademark only by those who have the right to do so, or otherwise by third parties who have the agreement of the former.

Moreover, it is not possible to register as a trademark signs which would infringe the copyright, industrial property right or any other exclusive right of a third person. Finally, signs likely to deceive the public, particularly on the geographic origin, the nature or quality of the product or the services, cannot be registered as trademarks.

Strong trademarks and weak trademarks

Trademarks can also be classified as weak trademarks and strong trademarks. It is possible to use as a trademark a word which is a modification, even a slight modification, of the general word for the product (an extreme case is the use of the word “automobilio” to distinguish a car “automobile”). Such a trademark has a very limited protection, and for this reason is usually called a weak trademark, because it is only protected insofar as it differs from the general denomination of the product.

Strong trademarks are those which have a particular power to individualize the product, that is, where the words, figures and other signs which constitute the trademark do not present, at least immediately, any conceptual connection or link with the product which they distinguish. A patronymic trademark (that is, consisting of the name of a person) is a strong trademark, as there is no conceptual connection with the product. Entrepreneurs should always protect their name as a trademark to prevent third party Companies from starting up with the same name.

Secondary meaning

Secondary meaning occurs when a sign initially with no distinctive capacity like a descriptive expression or in any case an expression of common use, and therefore that cannot be protected as a trademark, keeps its own original meaning but, with the passing of time, takes on another, secondary meaning, which allows the public to identify the origin of the products as coming from a certain company. This mainly happens when the company makes constant and substantive use of this expression and a consequent association is created in the mind of the consumer.

De facto trademarks

It is possible for a company to acquire the exclusive right to use the trademark simply by using the trademark, whether the trademark is registered or not (so-called unregistered trademark or de facto trademark). An unregistered trademark enjoys a lesser juridical protection. The holder can prevent third parties from registering a trademark corresponding to the de facto trademark (as if he were the proprietor of a registered trademark) only if, through use, the trademark has attained a sufficiently widespread fame throughout the national territory. If however the trademark has been pre-used by the holder of the application for the trademark, this does not prevent the trademark from being registered. There are countries which do not recognize pre-use, nor de facto trademarks. If however the unregistered trademark only enjoys a local fame, others will be able to register a corresponding trademark, while those who have used the unregistered trademark will be able to continue to use it, notwithstanding the registration obtained by others, within the limits allowed by pre-use, that is, within the limits of local use. Trademarks known abroad, if their fame has extended to Italy, preclude the registration of the trademark in Italy on the part of third parties.

Opposition procedure

An administrative opposition against the registration of a trademark valid in Italy can be started against:

  1. applications for Italian trademarks filed after 1 May 2011;
  2. international registrations designating Italy published in the first edition of the month of July 2011 of the Gazette of International Marks.

The following subjects are authorized to file oppositions:

  1. holders or exclusive licensees of a previous Italian or Community application or registration, or an international registration designating Italy or the European Union, against an identical or similar trademark for identical or similar goods and/or services;
  2. persons, bodies and associations pursuant to art. 8 of Legislative Decree 30/2005 which regulates those cases where a request is made to register as a trademark: a portrait; a name of a person other than the person requesting registration and where the use thereof may damage the reputation, credit or decorum of the person authorized to bear said name; if well-known, the names of persons, signs used in the artistic, literary, scientific, political or sports field, names and acronyms of events and those of non-profit-making bodies and associations, and also the characteristic emblems of the latter.

Unlike an opposition before the European Union Intellectual Property Office (EUIPO, until 23 March 2016 known as Office for the Harmonization in the Internal Market - OHIM), an Italian opposition cannot be based on the following:

  • unregistered trademarks or other signs used in normal trading practices (such as domain names, business names) which have a purely local importance;
  • unregistered trademarks well-known in a member State pursuant to art. 6 bis of the Paris Convention;
  • registered trademarks or those at the application stage which are well-known for unlike goods/services.

The above rights will continue to be acted upon only in law suits in one of the 21 Specialized Sections for business matters distributed throughout Italy. If one of the Parties is a foreign Company, for disputes arising from 22 February 2014, there are only 9 Specialized Sections. For Italian trademarks, the opposition must be proposed strictly within the 3 months from the date of publication in the Italian Trademarks Bulletin, whereas for international trademarks, from the first day of the month following publication in the Gazette of International Marks.

Once the opposition has been presented and found admissible, the Italian Patent and Trademark Office (UIBM) notifies it to the Applicant for the Italian trademark opposed, and fixes a minimum period of 2 months (extendible several times upon request by the parties, for a maximum of one year), during which the Parties may settle the dispute amicably. If no agreement is reached, the UIBM fixes the deadline within which the Parties must present the documents supporting their positions.

In the course of the procedure, the holder of the opposed trademark may request opponent to prove that the prior trademark acted upon has actually been used, if it has been registered for more than 5 years. If such proof is not forthcoming within 60 days of the notification of the request by the Office, the opposition is rejected. At the end of the exchange of briefs, and in any case within 24 months from the filing date of the opposition (except for possible suspensions), the UIBM issues a decision. The losing party may be sentenced to pay a full or partial refund of the opposition fees.

The decisions of the UIBM may be challenged before the Appeals Board within the absolute deadline of 60 days of the notification thereof. The decisions of the Appeals Board are themselves appealable before the Court of Cassation, but only for questions of law, and not of merit.

In conclusion, this is a procedure that allows the holders of trademarks to protect their rights more quickly and especially more cheaply than law suits for annulment before the Specialized Sections, which until today have been the only protection available. Considering the mandatory deadlines within which requests for opposition must be presented, it is more advisable than ever for holders to start a surveillance service of their trademarks in order to verify possible situations of conflict with signs filed afterwards, and if necessary to take prompt action. As an alternative to an opposition, it is true that it is still possible to take legal action to annul a later trademark.

Lapse of the trademark

If the registered trademark is not used, by the holder or authorized person, for five consecutive years from the registration date, except in particular cases, the trademark lapses. The trademark also lapses when its use is suspended for an uninterrupted period of five years. The interested third party is responsible for demonstrating that it has lapsed. However, the lapse cannot be validated if use is started or restarted before the request for cancellation is made by the interested third parties. The right to the trademark remains the property of the firm even when the latter is bankrupt or goes into liquidation, as these cases do not signify the definitive cessation of activity on the part of the firm. However, if the Company goes bankrupt or into liquidation, the lapse as described above may occur.

The right to the trademark lapses because of non-use when the production and/or sale exercised under that trademark definitively ceases, and that happens when the company is closed down, which means that the holder of the trademark itself no longer exists, if the trademark has not been previously and legally assigned.

The trademark lapses due to vulgarization when the trademark has lost its distinctive force and the word or expression of which it consists has been acquired into the everyday language of consumers and producers (for example, PREMAMAN for clothes for expectant mothers, or, in Italy, PAGLIA E FIENO for pasta).

A trademark also lapses because of deception, if it is used in a deceptive way, or against the law or against public order or public morals. A collective trademark lapses if the relative regulations are not applied.

A trademark which has expired or lapsed through non-use or the end of the company's activity can be legally re-filed, or simply used, by a different person from the previous holder.

Validation

The holder of a registered or used trademark which is not simply known locally, who tolerates for five years the use of a previously registered trademark which is the same as or similar to his own, cannot request the cancellation of the previous trademark nor prevent its use for products or services in relation to which the second trademark has been used. According to this law, the holder of the trademark is personally responsible for exercising surveillance.

Protection

The trademark can be protected both administratively and judicially. It is protected administratively by means of a specific procedure of opposition to the definitive grant. It is protected judicially both by civil and by penal law. The judicial action to protect the right of the trademark can be to ascertain, to inhibit, to claim damages, and also to vindicate a claim when the ownership of the trademark is contested. Substantially the same regulations are applied as those relating to patents.

Filing the trademark abroad

For the extension of a trademark abroad, priority expires 6 months after it has been filed in Italy. To extend a trademark abroad under the priority system means that the date of validity of the trademark filed abroad starts from the filing date of the Italian trademark.

Unlike a patent of industrial invention, utility model and design and model, a trademark can be extended abroad even after the 6 months after filing in Italy and even if it is already disclosed, except for possible rights of third parties acquired beforehand.

When a Company starts working abroad it must think about the problem of piracy, which is very common in certain countries. That is, it has to take into account that, facilitated by particular legislation, third parties in certain countries have the habit of protecting other people's trademarks in their own name, in order to then make an illicit profit therefrom, even reselling the trademarks back to the legitimate owner.

Not all countries grant the registration of a trademark without a preliminary examination regarding the merit thereof, and this examination in some cases, where it is done, is very severe and it is not always possible to pass it.

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