In Italy, all signs (in particular words, designs, letters, figures) can be registered as trademarks, provided that they are suitable to distinguish products or services of a company from those of other companies, and if they meet the novelty, distinctiveness, lawfulness requirements. Sounds, colour combinations and colour tones, the shape of the product or the packaging thereof can also be registered.
Before filing a trademark, it is advisable to conduct:
- a trademark validity assessment on the characteristics inherent in the sign;
- priority search on any prior third-party rights.
When filing a trademark, it is necessary to precisely and fully define the products and/or services that the trademark is meant to distinguish and for which one intends to request protection. All products are conventionally classified into 45 classes defined by the International Classification of Goods and Services.
After carrying out the suitable preliminary verifications indicated above and after defining the products/services subject of interest, our firm carries out all the necessary formalities required for filing the registration application before the Italian Patent and Trademarks Office (UIBM).
Upon receiving the application, the Italian Patent and Trademarks Office carries out a formal examination of the distinctive capacity, lawful and non-deceptive use of the trademark subject of application. The UIBM does not carry out any priority search to determine the existence of identical or similar prior trademarks and therefore it does not issue any rejections on the grounds of the presence of prior trademarks susceptible to likelihood of confusion in the register. It will therefore be the responsibility of the proprietors of prior trademarks to take measures to prevent the registration of a trademark by filing an opposition.
In the absence of rejections and oppositions, the registration procedure shall be concluded within approximately 12/18 months from filing with the issuance of the registration certificate.
DURATION AND RENEWAL
The duration of the Italian registration is 10 years from the date of submission of the application. Renewal is required every 10 years. Therefore, the exclusive right to a trademark can be potentially maintained indefinitely.