Jan 12, 2024 (Newsletter Issue 1/24)Geneva Act (1999) RatifiedOn December 14, 2023, the Government of Italy deposited with the Director General of the World Intellectual Property Organization (WIPO) its instrument of ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“1999 Act”).
Italy has been a Contracting Party to the 1960 Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“1960 Act”) since June 13, 1987. In this regard, in 2001, the Italian Patent and Trademark Office informed WIPO that the maximum duration of protection provided for by the legislation of Italy in respect of industrial designs is 25 years, which has been applicable to a designation of Italy under the 1960 Act. Accordingly, the maximum duration of protection of 25 years will continue to apply in respect of a designation of Italy irrespective of the applicable Act, pursuant to Article 11(2) of the 1960 Act and Article 17(3)(b) of the 1999 Act, respectively.
In accordance with Article 28(3)(b) of the 1999 Act, the 1999 Act will enter into force with respect to Italy on March 14, 2024.
The ratification by Italy of the 1999 Act brings the number of Contracting Parties to this Act to 73. The total number of Contracting Parties to the Hague Agreement remains at 79. A list of the Contracting Parties to the Hague Agreement is available on the WIPO website here.Source: www.wipo.int Aug 23, 2023 (Newsletter Issue 7/23)
Industrial Property Act Amended
Law No. 102 of July 24, 2023, amending the Industrial Property Code, Legislative Decree No. 30 of February 10, 2005, was published in the Official Gazette, General Series, No. 184 of August 8, 2023. The law took effect on August 23, 2023.
The amendment has to two fundamental objectives: 1) the strengthening of the competitiveness of the country's system and the protection of industrial property; and 2) the administrative simplification and digitalization of procedures.
Most important steps:
- Protection of geographical indications and designations of origin strenthened.
Trademark registrations that include words, designs or elements that cause detriment to the Italian national image or reputation can be revoked.
- So-called Professor privilege overturned.
The ownership of inventions made by research personnel in the university environment is attributed in the first instance to the structure to which they belong and, only in case of inertia of the latter, to the researcher.
- Deadline for payment of patent filing fees prolonged.
Application filing fees may be payed within one month after the filing date with the filing date being kept.
- Obligation to send paper documents to IPO abolished.
A new provision allows the use of the e-filing system once the digital identity of the user is certified.
- Acceleration of procedures and decisions.
The term between the notification of the invalidity or revocation action to the parties and the hearing at the Board of Appeals has been reduced from 40 to 30 days.
Source: www.uibm.mise.gov.it
Dec 15, 2022 (Newsletter Issue 18/22)New Administrative Procedure for TM Invalidity and Revocation SoonOn 29 November 2022, the Decree of the Ministry of Economic Development of 19 July 2022, n. 180, was published amending the Italian Industrial Property Code to introduce administrative proceedings for invalidation and revocation of registered trademarks before the Italian Intellectual Property Office (UIBM).
As from 29 December 2022, it will be possible to file an action for invalidity and revocation against registered Italian trademarks before the UIBM through an administrative procedure.
Until now, Italy was one of the few countries in the European Union where no administrative procedure was available for trademark invalidation and revocation actions. Such actions could only be filed before the ordinary courts which remain available as an alternative route.
For more information, please see hereSource: www.studiotorta.com Jun 11, 2020 (Newsletter Issue 9/20)Register of Historical Trademarks of National InterestOn April 16, 2020, the Italian Intellectual Property Office (UIBM) has accepted applications for registered trademarks that may be included in a newly established register of historical trademarks of national interest. The new category was introduced last year in Italy by law decree number 34 of April 30, 2019 (converted with amendments into law decree number 58 of June 28, 2019).
The owner of the trademark or its exclusive licensee may submit the application to UIBM in electronic form.
Historical trademarks of national interest must be used in connection with the marketing of products or services specifically manufactured by or originating from an Italian "company of outstanding quality historically linked to the Italian territory" for at least 50 years and have been timely renewed. The status of historical trademark may also be granted to unregistered trademarks if they have been used without interruption for the same minimum period of 50 years, as evidenced by proof of such use.
For more information, please click hereSource: www.ip-coster.com Feb 14, 2019 (Newsletter Issue 2/19)Set to Implement EU Trademark Reform PackageThe Italian government’s Council of Ministers of November 20, 2018, approved two legislative decrees concerning intellectual property rights that finalise the implementation into national law of the so-called EU Trademark reform package, of EU provisions on the unitary patent and of the Unified Patent Court Agreement.
Both decrees will come into force after publication in the Italian Official Journal, expected to occur in early 2019.
The first decree concerns the implementation into national law of EU Trademark Directive No. 2015/2436 as well as of the EU Trademark Regulation No. 2015/2424, now consolidated into EU Trademark Regulation No. 2017/1001.
Some important changes will be:
- abolition of the graphic representation requirement for trademarks
- certification trademarks introduced
- absolute grounds for refusal of trademark registration apply in case of conflict with denominations of origin and geographical indications
- opposition procedure of new trademark applications extended in which the opponent’s prior mark enjoys a reputation, or it is a well-known mark
- exclusive right of the trademark holder is extended
- seizure of counterfeit goods in mere transit
- actions before the Italian Patent and Trademark Office for nullity or revocation of trademark registrations as of January 2023.
For more information, please check the article of the law firm Società Italiana Brevetti from Italy.Source: www.sib.it Feb 14, 2019 (Newsletter Issue 2/19)
Fast Track Filing Procedure Soon
Starting from February 26, 2019, it will be possible to file Italian trademarks in fast track procedure and thus obtain the publication in the bulletin within 7 days of filing.
To use the fast track procedure, applications must be filed online and the following conditions must be met:
- absence of priority claims
- goods/services must be included in the Nice Classification in force at the time of filing
- mark must be "individual"
- mark must be figurative or verbal (i.e. not a shape mark)
Source: www.rapisardi.com
Sep 06, 2018 (Newsletter Issue 15/18)
Trade Secrets Directive in Force
The Italian Legislative Decree 63 of May 11, 2018, implementing EU Directive 2016/943 on trade secrets, entered into force on June 22, 2018.
Some changes are the following:
- The protection has been increased. The acquisition, use or disclosure of a trade secret is now unlawful if the recipient knew, or should have known, that it had been obtained from someone who was using/disclosing it unlawfully.
- All rights and actions concerning the protection of trade secrets now have a prescriptive period of five years.
- Judges will have the possibility of restricting access to documentation containing trade secrets as well as restricting the number of people allowed to attend hearings.
- The judge must balance the opposing interests and take into account the specific circumstances of the case, including public interest.
Source: www.herbertsmithfreehills.com
Feb 13, 2018 (Newsletter Issue 3/18)New Forms for Filings of IP RightsThe Italian Patent and Trademark Office, Ufficio Italiano Brevetti e Marchi (UIBM), introduced new forms for the filing of IP rights (patents, trademarks, designs, etc.). Starting from February 5, 2018, new applications for filing of IP rights are only accepted, if made on the new forms.
The new forms are available online hereSource: www.uibm.gov.it Jun 30, 2015 (Newsletter Issue 10/15)
New Online Filing System Mandatory
Since May 18, 2015, it has been mandatory to file applications for patents for industrial inventions, utility models, designs, company trademarks, and Italian portions of granted European patents using only the new centralized portal set up by the Italian Patent and Trademark Office (IPTO). It is therefore no longer possible to file such applications on the telematic platform used up to now. If they are filed with the Chambers of Commerce, acting as branch offices of the IPTO, then the Chambers of Commerce will submit the applications using the new, centralized portal.
For the first few days of using the new filing system – as was to be expected – there have been some difficulties, and a number of areas need to be improved or changed. The IPTO, in any case, is in continual contact with firms working in the sector and despite the short period that has elapsed since the new procedure was rolled out, many problems have already been resolved and the new system is now even more usable and reliable.
Also, payment of the fees and dues can no longer be made with postal orders, but exclusively with online payments.
Source: Modiano & Partner, Italy
Jun 30, 2015 (Newsletter Issue 10/15)
IR Designating Italy Do Not Automatically Cover San Marino
On 23rd December 2014, the Patent Office of San Marino issued a recent interpretation of Article 43 of the Convention of Friendship and Good Neighbourhood entered into by Italy and the Republic of San Marino. Article 43 of the Convention defines that: "Each of the two States is obliged to prevent, within its territory, any usurpation of inventions, models and designs that are subject, in the other State, to industrial property rights, and any usurpation or infringement of trademarks or brand names duly registered and protected in the other State".
Based on this new interpretation, which was provided by the San Marino patent office following ratification of the exchange of notes between Italy and San Marino, as from 23rd December 2014 mutual recognition will only apply to trademarks, patents, designs and models registered or granted based on national applications, namely applications filed with the Italian Patent and Trademark Office or with the San Marino Patent and Trademark Office.
Consequently, it will no longer be possible for the holder of an international trademark or a European patent to enjoy protection also in San Marino simply by extending the scope of protection to Italy. Therefore, holders of European patents and international trademarks who wish to protect their inventions in the Republic of San Marino will be obliged to pay the national fees to the San Marino Patent Office.
Source: Rapisardi Intellectual Property, Italy
Jul 30, 2012 (Newsletter Issue 12/12)Grants for Registering CTM and IR The Italian Ministry for Economic Development is providing non-returnable grants to companies who wish to register their trademarks abroad as Community trademarks (CTM) or international designated trademarks (IR). The announcement was published in the Italian Official Journal No 105 of 7 May 2012.
a) A grant of 80% of costs incurred up to a maximum of EUR 4,000 per CTM application filed, up to a maximum grant per company of EUR 15,000 for applications filed for registration of CTMs with the OHIM after the publication of the call.
In order to access the grants companies need to have carried out at least one of the following activities:
- Filed an application for registration with the OHIM for a new trademark;
- Filed an application for registration with the OHIM for an owned trademark registered or filed nationally;
- Filed an application for registration with the OHIM for a trademark acquired from a third party that was already registered or filed nationally.
b) A grant of 80% of costs incurred up to maximum of EUR 4,000 (EUR 5,000 with a 90% grant if designating China or Russia) for each application for an international trademark designating a single country, and EUR 5,000 (EUR 6,000 with a 90% grant if designating China or Russia) for applications designating two or more countries. The maximum grant per company is EUR 15,000.
Measure b) is available to companies that on the date of filing of the application own a trade mark registered at Community or national level, including those who have acquired such marks from third parties, or who have already filed an application for a national or Community trade mark: grants are available for extension of the said marks by means of the WIPO procedure and are also available for subsequent designations.
Resources for both measures will be assigned on a first-come, first-served basis in accordance with the chronological order of applications made (considered filed as of the moment of submission of the online form) while funds last. Only costs incurred between 7 May 2012 and the date of filing of the application will be eligible.
Grant applications may be made as of 4 September 2012.
The following expenses are eligible for reimbursement: design of the new trade mark; prior art searches and assistance in the application process; assistance for purchasing of trademarks filed or registered at national level; assistance for the licensing of the trademark; filing fees.
For further information on the grant and forms, please click here
Source: Rapisardi Intellectual Property, Italy Jul 01, 2011 (Newsletter Issue 9/11)
Examination Backlog Cleared
The Italian Patent and Trademark Office announced that its trademark examination backlog has been cleared. Around 160,000 trade mark files were waiting for attention in March last year. A special taskforce of examiners and streamlined processes were introduced to make the office more efficient.
Source: www.uibm.gov.it, www.oami.europa.eu
May 05, 2011 (Newsletter Issue 7/11)Opposition Possible NowTrademark opposition will finally become available in Italy in July 2011; a ministerial decree has been signed that lays down the details of the procedure, including costs and deadlines.
Trademarks subject to opposition
a) Italian trademark applications filed as of May 1, 2011.
b) Italian designations of International trademarks, irrespective of their registration (or subsequent designation) date, published on WIPO’s Gazette as of July 2011.
Time limit
Three months starting from the publication date of the application on the National Bulletin or from the first day of the month subsequent to the publication of the Italian designations of International trademarks on WIPO’s Gazette.
Official fees
A fee of Euro 250 must be paid prior to the filing of the opposition.
For more information, please click here
Source: SIB Società Italiana Brevetti, Italy Apr 14, 2011 (Newsletter Issue 6/11)
Opposition Procedure Operational Soon
A high official of the Italian Patent and Trademark Office (IPTO) told the assembly of the Italian Institute of Intellectual Property Consultants that the opposition procedure for Italian trademarks is to become operational very soon. Most likely, it will be available for Italian trademark applications filed as from May 1st, 2011.
Furthermore, the current registration process could be speeded up to 3 to 6 months after filing, in contrast to 2-3 years until last year.
Source: SIB Società Italiana Brevetti, Italy
Aug 01, 2010 (Newsletter Issue 13/10)Accession to the Singapore TreatyThe World Intellectual Property Organization (WIPO) informs of the deposit by the Government of the Republic of Italy, on June 21st, 2010, of the accession to the Singapore Treaty on the Law of Trademarks. The Treaty will enter into force on September 21st, 2010.
Source: www.wipo.int Legal basis of the Italian trademark legislation is the Code of Industrial Property Rights which entered into force on March 2005. It replaced the previous Trade Marks Act in force since January 1993, amended in 1999. The Code was further amended by Legislative Decree No. 131 of 13 August 2010, entered into force on 2 September 2010. Further amendments were introduced to the Italian Industrial Property Code by Legislative Decree No. 15/2019 of 20 February 2019, entered into force on 23 March 2019, in order to comply with EU Directive 2015/2436 of 16 December 2015.
An Italian trademark will be valid in San Marino, by virtue of a treaty between the two States and according to the doctrine it may be recognised in the Vatican State.
Italy is a member of the Madrid Agreement, the Madrid Protocol and the European Union.
Trademark protection is obtained by registration. Earlier use of a nonregistered sign (so-called “marchio di fatto”) that has acquired a certain notoriety beyond a purely local level, precludes the later registration of the same or a similar sign. On the other hand, a sign used solely locally and enjoying at the most a purely local notoriety can continue to be used within the local area, but it does not bar a later national registration by another owner.
Nice classification, 12th edition
Registrable as a trademark are any signs, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and provided that they are reproduced in the register in a manner which enables the competent authorities and the public to determine clearly the scope of protection. The following may in particular be registered as a trademark: words, names, acronyms, letters, numbers, devices, colors and color combinations, the three-dimensional form of a good or its packaging as well as sound, position, pattern, motion, multimedia and hologram marks and any combination of the mentioned signs. Names of renowned individuals, signs or logos used in public (art, sport, political, etc.) or of denominations of non-profit associations are registered only by their owners or legitimate users or with their consent. For registering personal names and portrait of people may be required the beneficial owner consent.
Collective and certification trademarks are also registrable.
A new category of “Historical Trademarks of National Interest” was introduced in the Industrial Property Code (Legislative Decree no. 30/2005) by Article 31, c. 1, letter a) of Decree-Law no. 34/2019 ("Growth Decree"). As of April 16, 2020, trademarks registered for at least 50 years, or for which continuous use can be demonstrated for at least 50 years, used to market goods or services made by a national company of excellence historically linked to the national territory, may be registered in the special register of historical trademarks of national interest. The status may also be granted to unregistered trademarks if they have been used without interruption for the same minimum of 50 years as evidenced by proof of use. The registration to the register has an unlimited duration and gives the right to use the respective logo “Marchio Storico” for commercial and promotional purposes.
The application can be filed at the Italian Patent and Trademark Office, the Ufficio Italiano Brevetti e Marchi, Ministero delle Imprese e del Made in Italy (UIBM), directly on-line or through the Chambers of Commerce.
Multiple-class applications are possible.
Applicants residing or established abroad must elect an address for service in a European Union or European Economic Area member country (usually c/o an Italian professional representative).
A signed power of attorney is sufficient (no authentication nor legalization is needed).
Foreign applicants do not need a domestic registration.
The application process includes a formal examination and an examination on absolute grounds but no search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use prior to filing.
After the filing, the trademark application is made publicly available at the Italian Patent and Trade Marks Office. Once examined, trademark applications are published on the Italian Official Trademark Bulletin for third parties' possible oppositions.
A fast-track-filing system is operational since 26 February 2019. In the absence of objections by the Italian Patent and Trademark Office, fast-track trademark applications are published for the opposition period within 7 days from their filing date, while non-fast-track applications usually take around 4 to 6 months before being published.
National:The opposition period is 3 months from the date of publication in the Italian Official Trademark Bulletin.
If the opponent has already submitted a general Power of Attorney, a fee of EUR 250 (plus stamp duty) is payable when filing the opposition. If the opponent has not yet submitted a general Power of Attorney, the fee payable is EUR 284 (plus stamp duty).
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Italian trademark applications enjoy full protection as from their filing date, albeit provisionally.
A trademark registration is valid for 10 years from the filing date of the application, and it is indefinitely renewable for further periods of 10 years. No evidence of use is required by the Office in order to maintain the validity of the registration.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee is approx. EUR 143 for one class and approx. EUR 34 for each additional class, excluding trademark agent charges, stamp and other duties. The official fee payable on filing the power of attorney is a further EUR 34.
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Practical details on trademark licensing are available in our publication
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More in-depth details are available for the following aspects:
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Jun 23, 2023
Barzano & Zanardo, Milan, Italy
