Why and how to register a trademark in Italy

To obtain trademark protection in Italy, one can register either locally via the Ufficio Italiano Brevetti e Marchi (UIBM), or regionally by filing a European Union Trademarks (EUTM) which grants protection in the whole European Union. 

Italy is also a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.

A registered trademark in Italy grants trademark protection in San Marino. However, recognition in San Marino is only if the trademark is registered directly through national procedure in Italy, and not if Italy is designated via Madrid or if a European Union Trademark (EUTM) is registered.

In Italy registration is not mandatory to obtain trademark rights, as extensive prior use of a trademark can be recognized. However, registration is always recommended as it grants presumption of ownership and helps enforce the trademark.

It is not necessary for the trademark to be in use at the moment of registration. However, should the trademark not be used within a period of five years after the registration, it will become vulnerable to cancellation actions for non-use.

If you register a combined trademark (which includes both word elements and figurative elements) in Italy, the exclusive right to use the trademark is limited to a use of the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.

Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.

After the trademark application has been examined and found acceptable by the UIBM, it will be published for opposition. During the three-month opposition period, third parties will be able to file opposition actions against the application.

Registered trademarks in Italy are valid for ten years, starting on the application date. They can then be renewed for successive ten-year periods. The renewal can be requested during the 12 months preceding the expiration date, as well as during the grace period of 6 months after the expiration, subject to the payment of additional fees.

If you would like for the figurative or design elements of your trademark to be considered when assessing your trademark for registration in Italy (Trademark Search Report), contact us directly in order to determine if we may be able to offer this in this jurisdiction. In such cases, prices for service and estimated delivery times may vary.

 

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