Trademark Registration in Italy

To obtain trademark protection in Italy you can proceed in two main ways:

• National route: file directly before the Ufficio Italiano Brevetti e Marchi UIBM.
• Regional route: file a European Union Trademark (EUTM), which grants protection in all European Union member states.

Italy is also a member state to the Madrid Protocol, so you can extend an international registration to Italy via the Madrid System; we offer services for trademark filing through the Madrid System.

A registered trademark in Italy also grants trademark protection in San Marino, but only if the mark is registered directly through the Italian national procedure. EUTMs and international registrations designating Italy do not provide protection in San Marino.

In Italy, registration is not mandatory to obtain trademark rights, as extensive prior use can be recognized. However, registration is always strongly recommended, since it:

• Grants a presumption of ownership,
• Helps prevent future conflicts about who owns the mark, and
• Facilitates enforcement in cases of infringement or unauthorized use.

Also, keep in mind that searches for figurative elements (logos) are not available by default: searches only cover the verbal elements of a mark. If you want the figurative or design elements of your mark to be considered in a Trademark Search Report for Italy, you should contact us directly; in such cases, fees and delivery times may vary.

If you register a combined trademark (word + logo) in Italy, your exclusive rights are limited to using the mark exactly as filed and registered. If you wish to use the word part separately from the logo (or vice versa), it is recommended to file additional trademarks for the specific elements you want to protect independently.

To register a trademark in Italy, you will generally need:

• Scanned copy of a signed Power of Attorney. No notarization or legalization required.
• The name or logo you want to register
• The applicant’s details

Your iGERENT consultant will confirm the exact requirements for your case and guide you through each step.

The average time frame to register a trademark in Italy is around 6 months for straightforward cases. This is an estimated processing time based on current application timeframes and may vary considerably.

Once registered, a trademark in Italy:

• Is valid for 10 years starting from the application date.
• Can be renewed for successive ten-year periods indefinitely.

The renewal can be requested:

• At any time during the 12 months preceding the expiration date, and
• During a grace period of 6 months after expiration, subject to the payment of additional (late) renewal fees.

Although the mark does not need to be in use at the moment of registration, if it is not used for a continuous period of five (5) years after registration, it becomes vulnerable to cancellation actions based on non-use.

Yes. After the UIBM examines the application and finds it acceptable, the mark is published for opposition.

• Third parties may file opposition actions within three (3) months from the publication date.

If a third party attempts to register or use a mark for similar goods or services that includes a primary or distinct part of your trademark, you have the right to oppose the application based on confusing similarity. The probabilities of success will depend on the circumstances of each case.

Use is not required for the trademark to be registered initially in Italy.

However, to maintain the registration:

• If the trademark is not used for a consecutive period of five (5) years after registration, third parties may file cancellation actions based on lack of use.

Therefore, while use is not required at filing or registration, genuine use within five years is important to avoid vulnerability to cancellation.

Italy recognizes three-dimensional (3D) trademarks through the Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi – UIBM).

When registering a 3D mark:

• Applicants must provide a clear graphical representation of the mark from multiple angles.
• The 3D shape must be distinctive and not solely functional.

Italy allows protection of product shapes, packaging or containers as 3D trademarks. If the 3D mark does not have inherent distinctiveness, the office may require evidence of acquired distinctiveness through use in the Italian market. For more details, you can visit the UIBM website.