Registration of a trademark in Italy. FAQ

Registration of a trademark in Italy. FAQ

1) What is a trademark in brief?

According to art. 7 of the Italian Industrial Property Code (IPC) n1, all graphically representable signs, such as words (including personal names), drawings, letters, numbers, sounds, the shape of a product or of its package, combinations or chromatic tones, may be subject to registration as a company trademark, provided they are able to distinguish the goods or services of one company from those of other companies.

Therefore, it seems quite clear that a trademark is a sign that allows customers to identify your brand/product/service, and, at the same time, to distinguish your brand/product/service from the ones of your competitor/s. A trademark must be a “distinguishing” sign and clearly defined in order to guarantee with certainty what it covers.

For example “Testarossa” (Ferrari), Bvlgari, Sperss (Gaja), etc. are all registered trademarks.

2) Why should I register my trademark?

It is very important to register your trademark at any level (national, regional, European, or worldwide) because it identifies you, your company, your products/services, and it tells customers who you are and what you do/offer. It allows you to be officially recognized worldwide (or wherever you registered your trademark) and, at the same time, protected from others who might think of exploiting your success by copying your distinctive mark. It also gives value to your brand.

3) What kind of protection does a registration of a trademark give?

Trademarks are protected by intellectual property (“IP”) rights. In general, the owner of a trademark shall be entitled to prevent all third parties not having his consent from using the same (or a similar) sign in the course of trade for the same goods and/or services for which it is registered.

4) Can I register my trademark in Italy?

Yes. If you want or need to protect your trademark in Italy, the only thing that you have to do is submit your registration request to UIBM (Ufficio Italiano Brevetti e Marchi).

5) For how many years is my trademark protected if I register it at UIBM ?

Ten years. The registration of a trademark is valid for 10 years. The term is retroactive, which means that, once the request is approved by UIBM, the date will be the one on which the application was deposited. After ten years, if you are still interested, you will need to renew the registration.

6) Where is my trademark protected if I register it at UIBM?

After the process is regularly completed the trademark is protected within the entire Italian territory.

7) How do I register a trademark at UIBM?

The easiest and fastest way is to file an online request, in Italian, at the UIBM‘s website. In order to do this, you must be a consultant in industrial properties accredited by the UIBM or a lawyer (see below). Otherwise, anyone can submit its registration request to a Camera di Commercio (Chamber of Commerce).

8) Can anyone submit a registration request to UIBM?

In general, yes. Any person or company can submit a registration request.

The applicant can personally submit the request to a Camera di Commercio. Otherwise, he/she can elect a representative who can submit it to a Camera di Commercio or file it online on his/her behalf. The representative must be a lawyer or chosen from among the consultants in industrial properties, registered in a specific professional register held by the Italian Patent and Trademark Office. However, if you do not have a domicile in Italy you will need to appoint a representative in order to file your request.

9) How much does it cost to file online a registration request?

If you are entitled to apply online (http://www.uibm.gov.it/index.php/deposito-telematico) (see above par.7,8), the initial fee is € 101 (which includes one Nice class – see below),  + € 42 (stamp duty ), for a total of € 143. If you need to elect a representative (with a letter of appointment) you will also need to add € 34 (therefore the total will be € 177). From the second class on you will need to add € 34 for each class. For example, if you want to register your trademark online including three classes through an Italian representative, you will have to pay € 245 (€ 101+42+34+34+34).

10) How do I pay the taxes?

Once your request has been submitted, you will receive an “F24 model” via email that can be paid at your local bank or online if you have “Home banking”. You will need to buy the € 42 stamp for example in your local Tobacco shop, before submitting the form.

11) What information is required to fill in the registration form?

You will need to indicate all the following details: Full name, legal form (in case of a company), Nationality, Country of registration (in case of a company), contact information (email, phone, fax) of the applicant/s, reproduction and detailed description of the mark (what you see when you look at the mark), the type of mark (figurative, verbal, etc.), the class/es for which you want to register according to the Nice classification, and other similar information.

12) What can I register as a trademark at UIBM?

It is possible to register the following:

1. words (including personal names);
2. drawings;
3. letters;
4. numbers;
5. sounds;
6. the shape of a product or of its package;
7. combinations or chromatic tones.

13) What distinctive features must a mark have to be registered?

1. novelty;
2. distinctive character;
3. lawfulness.

14) Is a mark owned by more than one person called “collective mark”?

No. A mark can be individual or collective. Individual marks can be owned by more than one person or legal entity. A collective mark is a mark owned by an association of manufacturers, producers, suppliers of services or traders, consortia, etc..

15) What is a Nice Classification class?

The Nice Classification consists of a list of 45 classes (1 to 34>>goods; 35 to 45>>services) that classifies goods and services to be protected by a trademark. For example, if your company sells engines for land vehicles, you should consider Class 12 which refers to “Vehicles; apparatus for locomotion by land, air or water”; if you have a restaurant you should consider Class 43 which regards “Services for providing food and drink; temporary accommodation”. The above are headings (titles) of two classes, but you should read the explanatory notes to better understand what the class contains. Moreover, when applying, and therefore listing the goods or services you are interested in, we suggest using the exact Nice Classification terms, to avoid confusion.

16) How do I know that I am ready to file a registration request?

Before you file your registration you should know:

1. if it is the correct mark for you and if it fits your IP strategy;
2. if it can be clearly, objectively, and distinctively represented, but at the same time it is not descriptive;
3. if it has the required features (novelty; distinctive character; lawfulness);
4. that it has not been already registered by someone else;
5.  to which Nice class/es it belongs according to your personal list of goods/services you would like to sell/offer;
6. if you have and are willing to make public the owner’s details;
7. if you need a representative.

17) How do I know that I can register my trademark?

Actually, you cannot be certain until you have a response from UIBM. However, the first thing to do before you proceed with the registration, is to verify if your trademark is “available”, by carrying out a search on the main databases in order to verify if and how others have registered identical or similar trademarks and for what Nice classes. In fact, a request to register a trademark identical to another one already registered or which may cause confusion in the market will not be approved.

18) What happens after I file my registration request?

The positive outcome of the registration is not automatic and certain. Once you have filed your request, your trademark will be processed by UIBM to check that it meets the requirements and can actually be registered (otherwise it will be rejected). These are the steps the Office follows to complete the process:

1. Examination period: UIBM carries out a formal examination (checks that your trademark registration request contains the mandatory and basic information required, if there are errors, etc.) followed by a technical examination. Then the registration request is published in the “Bollettino”;
2. Opposition period: before publication, any interested party can send “observations” with which they express the reasons why the mark should not be registered. After publication, any interested party can file an “opposition” to your request within three months from publication;
3. Registration: once the two above-mentioned periods are positively concluded, your trademark is finally registered. UIBM will then issue a certificate of registration.

However, if, for example, you received a negative final decision, you can always file an appeal before the Board of Appeals (“Commissione dei Ricorsi”).

19) How long does it take for UIBM to complete the registration process?

After you file a registration request UIBM needs at least six months to complete the process (usually from 8 months to 3 years), depending on several factors including if someone has filed an opposition to your registration request.

20) Is it possible to add a Nice class after the registration process is completed?

No. It is important to choose all the classes, goods and services of interest before you file your request.

21) Do I get my money back if I withdraw my request or if it is refused by UIBM?

No. In these cases, no refunds are given. Actually, you will need to pay some other taxes to withdraw your request.

22) Can I use my trademark before it is registered?

Yes. Actually, the owner has a right to use its mark whenever he/she wants, with the risk that it is not protected. He/she can also decide to use it and not to register it. However, the use of the mark prior to its registration does not guarantee registration, and sometimes could also be counterproductive.

23) Do I have to use the “TM” symbol before the registration process is completed?

No, you do not have to, but if you want, you can use it. However, in Italy it is very common to use the “TM” after filing your registration request and until the trademark is registered. Then you will be able to use the R symbol.

24) Do I have to use the “R” symbol to show that my trademark is registered?

No, you do not have to. However, many owners, after they obtain registration, prefer to use it, especially because it gives value to the brand in the eyes of the general public.

25) What can I do if someone tries to register a trademark identical/similar to mine?

If someone files a registration request for a trademark that could be identical/similar to yours, you can send your observations, before the registration request is published in the “Bolletino”. Otherwise, within three months from the publication of the registration request, you can file an opposition, to which follows a submission of writs by the parties. UIBM will then decide if the opposition has grounds or not. In many cases, parties reach an agreement after the opposition is filed.

26) What can I do if someone uses a trademark that is identical/similar to mine?

If someone, without your permission, is using your trademark, or a similar one, or one that can generate confusion between the two marks, you can decide to take action to stop them. Generally, you will notify a request to stop using the trademark and, if you suffered damage, a request for compensation. If the outcome of your request is negative, in the sense that they did not stop or you did not reach an agreement, you will need to decide if you want to start legal action against the other party. In this case, you will need to prove the correct registration of your trademark and its seniority (earlier registration of the trademark).

27) Can I sell my trademark?

Yes. It is possible to sell or also license a trademark. The first difference is rather obvious because when you sell a trademark you transfer its property. There are other differences in fees, geographical scope, time, and goods and services, between selling or licensing a mark. Any changes to the ownership should be communicated to UIBM.

28) What happens ten years after the registration?

After ten years from your registration, you can decide to renew your registration. Otherwise, you can decide to abandon it with the consequence that the rights associated with your trademark will “expire”.