Search Country

Countries:
A-E F-J K-O P-T U-Z

Get Listed

Promote your expertise to IP professionals worldwide.
read more

Filings 2000-2010
Filings by Type
Trademark Types
Top Classes
Geographical split

Top Owners
- Total Filings
- Only First Filings

Top Agents
- Total Filings
- Only First Filings

To keep updated on the latest amendments to international trademark laws
click here

Italy Special

Until recently, the Italian trademark registration system was the only one in Europe without an opposition procedure. On July 1st, 2011, opposition becomes a reality - six years after its introduction by the Italian Code of Industrial Property of 2005.

This special outlines the new procedure. Implications for trademark owners are explained. Limitations for oppositions are pointed out. Our authors further describe obstacles the Italian Patent and Trademark Office (UIBM) has been facing and highlight challenges which it will have to manage in the future.

The issue is complemented by interesting statistics on Italian trademarks and a recent case of general interest.

We thank our contributors Barzano' & Zanardo, Bugnion S.p.A., Jacobacci & Partners, Simmons & Simmons, Società Italiana Brevetti and Trevisan & Cuonzo Avvocati for participating, especially Edital, Rapisardi Intellectual Property and Società Italiana Brevetti for providing the statistics on Italian trademarks.

Italian opposition proceedings: from utopia to reality

Elena Monte, Jacobacci & Partners, Italy

Since the publication of the Code of Industrial Property, introduced by the Legislative Decree 30/2005, opposition proceedings have long been awaited as administrative procedures to be used by trademark owners in order to prevent the registration of identical or confusingly similar trademarks. However, the implementing rules were not adopted until the publication of Regulation 33/2010 and Legislative Decree 131/2010, amending a number of provisions of the Industrial Property Code. read more

Trademark Opposition Kicks Off in Italy

Andrea Klein, Società Italiana Brevetti, Italy

Italy’s long wait for trademark opposition proceedings to become available is finally over. The basic legal framework for trademark opposition has actually been in place in Italy since 2005, enshrined in the Industrial Property Code. The delay was due both to the need for an implementing regulation, adopted only last year, and to organizational issues which the Italian Patent and Trademark Office has meanwhile addressed and solved. A ministerial decree, awaiting publication, set the date on which trademark opposition will become available. read more

At last, a trade mark opposition procedure in Italy!

Laura Orlando, Simmons & Simmons, Italy

The Italian IP Code foresees that owners of earlier trade marks may oppose national applications by submitting a motion to the Italian Patent and Trademark Office (IPTO) and sets out the backbone of relevant rules at Articles 174 to 184. A Regulation of Implementation was enacted with Decree number 33 issued by the Ministry of Economic Development on 13 January 2010, in force since 10 March. read more

Defending your mark against dodgy filing practices

Edith Van den Eede, Società Italiana Brevetti, Italy

The Italian PTO has pulled off a difficult feat by achieving the unexpected, being ready to face opposition proceedings as of 1 July next, in line with the cautious announcement of an imminent launch only a couple of months ago.
Bad reputations are hard to shake but the Italian PTO seems to have been renewing and improving the office’s practice as well as speeding up processing time in such an impressive way as to have silenced (nearly) all criticism. read more

Introduction of Opposition Procedure in Italy

Julia Holden, Trevisan & Cuonzo Avvocati, Italy

A Ministerial Decree (11 May 2011) has finally been issued by the of the Ministry of Economic Development which allows for a trade mark opposition procedure to become operative in Italy. Although it does not include all administrative details it is a large step forward including a start date of July 2011.
The first steps towards a trade mark opposition procedure in Italy were laid down back in February 2005 when the Industrial Property Code was first enacted (see Arts 174 . 184). read more

ITALY- Overview on the Trademark Prosecution System

Simone Verducci Galletti, Bugnion S.p.A., Italy

Until now the Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi - UIBM) can hardly count itself among the world’s most efficient and modern industrial property offices. However moves are certainly being made in the right direction. This is partly due to the efforts made by Italian legislators who since 2005 have introduced a number of measures aimed at reorganising and at filling the large gaps that have existed for some time now in the Italian industrial property system, and more particularly in the trademarks system. read more

Yahoo! Italia Liable for Contributory Copyright Infring...

Peter McAleese, Barzano’ & Zanardo, Italy

In a recent Decision issued by the Court of Rome (9th Section) in injunction proceedings (currently under appeal), Yahoo! Italia was found liable for contributory copyright infringement for listing links on its search engine to pirate websites that hosted the film "About Elly" and for not taking steps to remove such links when made aware thereof.
PFA Films S.r.l. (PFA), holder of the exclusive rights in Italy to the Iranian film “About Elly”, which had found its way onto several popular read more