Trademarks in Italy
Articolo tratto da Lexology
Parliament and the government establish and amend the legal framework, while the Ministry of Economic Development adopts relevant implementing acts.
Italy has adopted a ‘mixed system’, using both first-to-file and first-to-use rules to determine trademark ownership. While the owner of a registered trademark is assisted by a rebuttable presumption of validity, unregistered trademarks are protected only if evidence of use with a qualified reputation is provided.
According to Article 12(a) of the Industrial Property Code, the owner of an earlier unregistered trademark is entitled to challenge the later registration of an identical or similar mark for identical or similar goods or services if there exists a likelihood of confusion or association for the relevant public. Protection against infringement of an unregistered trademark can rely on both unfair competition rules (Article 2598(1) of the Civil Code) and the Industrial Property Code’s procedural enforcement rules.
The owner of a well-known registered trademark can challenge the later use or registration of similar signs even if there is no similarity between the products or services (ie, there is no likelihood of confusion) for cases where the later mark could take unfair advantage of or be detrimental to the distinctive character or the reputation of the prior well-known trademark. However, it is unclear whether unregistered trademarks enjoy this enhanced protection as this is independent from a finding of likelihood of confusion.
A foreign trademark registration that is not yet registered in Italy can enjoy protection as an unregistered Italian trademark if it is used with qualified reputation in the country or, even if it is not used in Italy, if it is already widely known by the Italian public under Article 6bis of the Paris Convention
According to Article 19 of the Industrial Property Code, the registration of an Italian trademark can be obtained by any person or legal entity – including foreign nationals and companies – that is making use, or proposing to make commercial use of the sign, directly or under licence. Article 19(3) of the Industrial Property Code also allows public entities (eg, state, regional, district and municipal administrations) to file trademarks.
A trademark registration can be refused on the following absolute grounds:
- a lack of distinctive character (ie, the sign is generic, descriptive or in common use, is constituted by a functional shape or is a public insignia);
- the sign is contrary to the law, public order or principles of morality; or
- deceptiveness as to the geographical origin, nature, quality of goods or services.
Absolute grounds of refusal can be raised both ex officio by the Italian Trademark Office and by any interested party within nullity court proceedings.