Contributed By Clifford Chance Studio Legale Associato
Marks, business names and trade names are the typical forms of distinctive sign in the Italian legal system (segni tipici).
There are also distinctive signs that are non-typical (segni atipici) but nonetheless have the function of identifying the business and communicating, including advertising slogans, trade dress and domain names.
With specific respect to trade marks, there are various categories, which differ based on the nature of the sign.
Using the list set out in the law as a reference and in particular in Italian Legislative Decree No 30/2005 and further amendments (the Italian Code of Intellectual Property Code, or the IP Code), a trade mark can be comprised of (i) words, be they actual or fanciful, or (ii) drawings. Typically trade marks are classified, in the first case, as word trade marks and in the latter case as figurative trade marks.
Trade marks comprised of both words and images, on the other hand, are typically classified as complex trade marks. The complex marks are typically made up of a distinctive core and further secondary elements (marchi complessi). There are also marks that combine elements that would not be distinctive when taken alone (marchi d'insieme).
A trade mark can also be a person's name, in which case it is classified as a patronymic trade mark.
In addition to words and images, the law also allows registration as trade marks of numbers and letters in the alphabet.
It is also possible to register as trade marks the following: graphically represented sounds, the shape of a product or the product's packaging and the colour combination or colour shades of a product.
The IP Code does not expressly mention the possibility for the applicant to file a trade mark application for other types of signs, such as smell, position, movement, tactile and gustative marks. Despite this fact, Italian undertakings are increasingly focusing their attention on these kind of signs as trade marks.
Nowadays, amongst the elements that can be granted trade mark protection, especially in the fashion industry, there are some elements of the products. These elements, originally created as decorative or merely aesthetic signs, are becoming a symbol, like the essence of the 'exclusive style' of a certain brand.
Among these elements there are also some signs that cannot be easily specified in a single element (because they are susceptible to innumerable variations; all, however, referable to a common denominator or style).
The Italian courts classify word marks as strong or weak (marchi forti e deboli) depending upon the strength of their distinctiveness.
Strong word marks are often made-up words regarding a name that has no conceptual relationship to the product or service in connection with which it is used.
Marks may also be classified as ordinary marks, or as marks that have a reputation (marchi di rinomanza), and thus enjoy protection beyond particular categories of goods and services, on a basis that proceeds from issues other than a risk of confusion.
Collective trade marks have instead the function of guaranteeing the origin, nature or quality of certain goods or services and can be registered only by entities that guarantee compliance with this function (eg, consortiums). All the subjects that respect the requirements to use collective trade marks are allowed to use them.
The Italian system recognises registered and unregistered trade marks (or de facto trade marks).
The fundamental condition to be met to obtain trade mark protection for unregistered trade marks, but also to ground an unfair competition claim, is to demonstrate that the unregistered mark is perceived by the general public as an indication of the origin of the product or has become well known/notorious in the relevant market.
This burden of proof is up to the unregistered trade mark owner and it is not always an easy proof.
If the unregistered trade mark is known only at a local level, the registration of a following identical trade mark is permitted, but the owner of the previous unregistered trade mark is always allowed to continue the use of the sign within the limits of such use (so-called diritto di preuso).
Under Italian law, a trade mark is capable of registration where it has the essential function of acting as a source indicator and it has distinctiveness.
Under Article 13(2) of the IP Code, "A trade mark that prior to the application for registration has following its use acquired distinctiveness may be the subject of registration." Besides, under Article 13(3), "A trade mark may not be declared or considered null and void if prior to the submission of the application for annulment or the defence of annulment the trade mark in question has following its use acquired distinctiveness."
This rule represents an exception to the general prohibition on registering trade marks that are merely descriptive or that lack distinctiveness and a defence to an application for annulment of a registered trade mark.
The rule introduced in Italy at the time that European Directive 89/104/EEC was implemented incorporates a principle that had already been affirmed in Italian case law. It is based upon the doctrine of 'secondary meaning', that a trade mark that originally lacked distinctiveness as a result of non-specificity, mere descriptiveness or a lack of originality may later acquire that distinctiveness. In doing so, it acquires a secondary, additional meaning, in its ability to identify an enterprise; that is, to act as a source indicator.
The doctrine enables developments in a mark's distinctiveness to be better exploited. It comes into play where a trade mark that was merely descriptive, and thus essentially void, subsequently becomes distinctive through use.
Typically, this will be the result of large, targeted investments in marketing, which may lead to a radical transformation in the distinctiveness with which a mark is perceived within its market.
The Italian Patents and Trade Marks Office is the Ufficio Italiano Brevetti e Marchi (UIBM) and it keeps the trade marks register.
All information related to filing applications of trade marks, including any relevant form, is stored there.
The register is publicly and freely available on UIBM's website at the following address: https://ww.uibm.gov.it/. Through this site, it is possible to perform researches of novelty.
In Italy there is just one trade mark register.
It is normal practice to search for prior trade marks. Trade mark attorneys carry out this type of search for previous registered rights before filing (also on professional databases). They provide the applicant with the most relevant results, pointing out — based on pre-established parameters — the criteria in the decision to continue or not with the registration of a trade mark.
It is obviously more difficult to search for unregistered trade marks; because of their nature, there is no register or database for non-registered trade marks.
The requirements for the valid registration of a trade mark are:
Pursuant to Article 9 of the IP Code, a sign cannot be registered as a trade mark if it is constituted exclusively by the product’s shape, which is (i) necessary to obtain a technical result, (ii) crucial for the product’s value, or (iii) imposed by the nature itself of the product.
According to Article 19, IP Code, a registration of a trade mark can be obtained by anyone making use, or proposing to make use, of it for manufacturing or trading products, or for rendering services of his or her own enterprise, or of enterprises under his or her control, or using the trade mark with his consent.
Not only individuals or private entities, but also public entities are therefore entitled to register a trade mark.
Under Article 7 of the IP Code, any sign capable of being represented graphically, in particular words, including personal names, designs, letters, figures, sounds, the shapes of goods or their packaging, the combinations or chromatic shades may be the subject of registration as a trade mark, provided that such signs are capable of distinguishing goods or services of one enterprise from those of other enterprises.
The Italian legal system recognises other rights to signs or source identifiers besides trade marks, which include company names, trade names and domain names.
Company names are regulated by Article 2,567 of the Italian Civil Code (ICC). They are the names of the business entities and are protected against following confusingly similar company names of other business entities.
Trade names are regulated by Article 2,563, ICC. They shall include at least the surname or the initials of the entrepreneurs. According to case law, the right arises from the use per se, whilst the registration in the company register can establish a data certa (certain date).
The domain name is the sign associated to an IP address. The exclusive rights of a domain name derive from the registration of the domain name on a first-come, first-served basis. The IP Code has recognised the domain name as a distinctive sign in its own right; therefore, if certain conditions are met, the previous domain is able to invalidate the registration of subsequent marks identical to it.
Under Italian law, IP rights constitute in general a unified law sector (so-called principio di unitarietà dei segni distintivi). As a result, a registered and currently valid trade mark would enable the owner also to use it as a company name, trade name and domain name.
An application for a trade mark can be filed before any Italian Chamber of Commerce or the UIBM and shall contain information regarding the applicant and his representative, if any, as well as a specimen of the trade mark.
Multi-class applications are permitted, but the applicant has to claim specific products and services within the relevant class/classes in the application form.
Once filed, the UIBM checks the formal validity of the trade mark application and carries out its examination on the absolute grounds of refusal set by Article 170 of the IP Code (graphical representation, distinctiveness, lawfulness).
After this check, the application for registration is published in the Official Gazette of the UIBM.
According to Article 175 of the IP Code, any third party can send written remarks to the UIBM, without assuming the status of party in the registration procedure. The UIBM can consider the observations relevant and in that case assign to the applicant a term to reply.
If no relevant objections are raised, the trade mark application is published in the National Trade Marks Bulletin.
A three-month period is then given for any third party to present opposition based on any of the relative grounds for refusal provided by Article 12 of the IP Code (novelty).
In the event that no oppositions are filed (or they have been rejected by the Office) and no observations have been considered relevant by the UIBM, the trade mark is registered. Exclusive rights arise from the registration, but the effects of registration run retroactively from the date of filing of the application and may be enforced against third parties from the date of publication of the application.
Italian legislation does not require the effective use of the sign in commerce as a condition for the registration of the trade mark.
If a trade mark has not been the object of genuine use for a period of five years since the registration, in connection with products and services claimed in the registration, any third party could raise the non-use objection in any court proceedings and/or could start an action aimed at obtaining the annulment of the trade mark as a result of its non-use according to Article 24 of the IP Code.
The duration of protection of a registered trade mark lasts ten years.
The owner can apply for a renewal. The duration of the trade mark is therefore potentially unlimited.
The Office fees for filing a single-word mark in one class amount roughly to EUR160 and representative fees generally amount roughly to EUR500/600.
Taxes for renewal are, in 2019, the following:
In principle, Italy does not allow for registration of series marks. Separate trade mark applications shall be filed with the UIBM if the applicant wants to protect all of the series marks. Using these separate filings, defensive trade marks can be registered. A defensive trade mark is a trade mark — similar to the 'principal' trade mark in relation to which the owner has a direct commercial interest – registered for strengthening the protection for the principal trade mark.
A defensive trade mark, also called a 'protective' trade mark, does not expire for lack of use, as long as (i) the main trade mark is effective, (ii) it is registered for the same classes of products or services as the main trade mark and (iii) the defensive trade mark and the principal trade mark are registered in the name of the same owner.
A substantial number of Italian court decisions have held that the defensive trade mark offers a sphere of protection that is independent from, or reinforcement of the protection available to, the main trade mark.
Although certain opposite minority opinions exist, the leading position is that a defensive trade mark must be similar to the main trade mark, but similarity does not mean that there must be a likelihood of confusion between the defensive trade mark and the principal trade mark; otherwise its role as a defensive trade mark would cease to exist. A defensive trade mark is what prevents third parties from 'coming near' the main trade mark, even to an extent that would otherwise be lawful.
The procedure to register a trade mark before the UIBM lasts roughly 15/18 months.
Representation by an Italian attorney is not mandatory. Applicants may only be represented professionally by qualified trade mark attorneys holding membership in the Italian Industrial Property Consultants Institute, or by attorneys (avvocati).
In the case of opposition, the registration process is stayed until the Opposition Division or, if applicable, the Appeal Commission grants its final decision. For the fees and taxes to pay, see 1.11 Registration Procedure of a Trade Mark.
The UIBM carries out the assessment of the 'absolute grounds of refusal'. Particularly, the UIBM may refuse the registration of a trade mark application for the following reasons.
See 1.11 Registration Procedure of a Trade Mark.
The UIBM does not consider the existence of prior rights like trade name right, copyright and name right as it only examines whether the mark shall be refused by absolute grounds of refusal.
The UIBM examines, however, compliance with Article 8 of the IPC, which concerns to some extent relative grounds for refusal.
According to this provision:
See 1.11 Registration Procedureof a Trade Mark.
According to Article 172 of the IP Code, the applicant may (i) revoke its trade mark application, (ii) amend or correct non-substantial aspects of the trade mark application before the UIBM makes a decision and (iii) complete or add documents if requested from the UIBM. After registration, no amendments/corrections/extensions can be made, albeit it is always possible to exclude specific classes from protection (for example, in the case of a court ascertaining a partial annulment for lack of genuine use).
The assignment of the application for the registration of a trade mark is always allowed and shall be notified to the UIBM pursuant to Article 172 (2) of the IP Code.
The decisions of the UIBM can be appealed before the Board of Appeal (Commissione dei ricorsi) within 60 days.
Board of Appeal decisions can be appealed before the Italian Court of Cassation only for violation of law according to Article 111 of the Italian Constitution.
Italian legislation does not require the effective use of the sign in commerce as a condition for the registration of the trade mark.
Indeed, according to Article 19 of the IP Code, the applicant may obtain the registration of the sign, which is merely intended to be used in the course of trade.
Genuine use must be in place within five years from the registration; after that, the use must not be interrupted for an additional five-year period. According to Italian prevailing case law, genuine use is a use that could be regarded as non-nominal use (uso non simbolico) and, therefore, a use that is able to reach a minimum quantitative decree in terms of sales figures.
The exact decisive threshold proving genuine use cannot be defined out of context according to Italian case law and a precise guideline is missing.
The evaluation basically depends on the circumstances of the single case, the evaluation of the submitted evidence in its entirety, the nature and characteristics of the goods or services, the particular area of business, etc.
According to a different thesis, genuine use would not be strictly related to a specific quantitative threshold, but would be any use that is able to provoke a notoriety of the sign in the relevant market.
Article 158 (1) of the IP Code expressly states that every trade mark application must concern one sign only; therefore, if the application regards more than one sign, the UIBM will assign a term to the applicant to divide the application.
Besides, in the case that the application regards more than one class of goods or services for which the trade mark is sought to be registered, the applicant may choose to divide the application in several partial applications (i) before the UIBM decides the trade mark application procedure, (ii) during the opposition procedure before the UIBM, or (iii) during every appeal proceeding regarding the registration of the trade mark.
According to Article 15 of the IP Code, the registered trade mark is protected for ten years starting from the application date and can be renewed with respect to the same sign and the same products and services for ten-year periods, for an indefinite number of times.
The renewal must be requested within twelve months before the expiry date of the ten-year period, or within six months after the expiry date. In the second case, however, an additional fee must be paid. If the delay in payment exceeds six months, the trade mark at issue expires.
According to Article 5 of the IP Code, "the exclusive rights conferred to the holder of an industrial property right by the Code are exhausted once the products covered by an IPR are put into the market by the holder or with his consent, within the territory of the State or the territory of a Member State of the European Community or the European Economic Area."
The trade mark holder can therefore no longer exercise control over goods that were first launched on the market with its consent, unless there are legitimate reasons for the holder to oppose further commercialisation of these goods, especially where the condition of the goods is changed or impaired after they have been put on the market.
Italy participates in the Madrid System.
Article 171 of the IP Code states that the UIBM will examine the international application designating Italy according to the same rules valid for national trade marks.
In the case of incorrect information regarding an 'absolute grounds of refusal', the error could be declared in the ex officio examination carried out by the UIBM; after the registration, the same error could be raised by the interested party before the competent court. Instead, in the case of errors regarding 'relative grounds of refusal', the error could be invoked by the interested party in the opposition procedure or, later, before the competent court.
Eventually, if the incorrect information constitutes a mere material error (not relevant for the validity requirements of the trade mark), it is possible to request an errata corrige to the UIBM. The request shall be submitted by the owner or their representative containing the error to be corrected and an exact indication of the requested correction and/or the place where the error is reported (UIBM database, official bulletin, etc).
There are no specific rules for design marks.
It is neither necessary nor mandatory for the trade mark owners to use symbols such as ®, or . However, it is quite common in the course of trade to use them to denote that the trade mark has been registered and that it is valid and effective.
According to Article 2,573 of the ICC and Article 23 of the IP Code, the trade mark can be assigned upon consideration or for free for all or for part of the goods and services for which it has been registered. The assignment of a trade mark can be made separately from the going concern.
The assignment of the trade mark must not result in misrepresentation as to the characteristics of the products or services, which are essential in the public's appreciation. In other words, a change in ownership of the assigned trade mark must not result in misrepresentation for the public.
The assignment of a trade mark is not subject to any specific formal requirement, but is typically made in writing, also for the purpose of evidence.
Italian law does not require a specific procedure to assign a trade mark.
According to Article 138 of the IP Code, any trade mark assignment concerning Italian trade marks – and therefore also the Italian portion of World Intellectual Property Organization (WIPO) trade marks – must be recorded with the UIBM.
Without recording (at least according to the main interpretation), any agreement is enforceable and binding for the signing parties, but the record is required in order to be the assignee capable to exercise the rights arising under the trade mark also against third parties. Registration is therefore strongly recommended in any scenario of trade mark assignment.
The recording procedure has become easier (in connection with the assignment agreements) under the IP Code.
Under the standard provision, it was necessary to have a copy of the agreement, containing at least the trade mark's number, a mention of the assignment and the date from which the rights have been assigned. The agreement must be signed by the parties with a public notary in their own country and subsequently legalised. The involvement of the public notary is necessary only to certify that the signatures of the parties are true (it is not a public deed). It was also necessary to have a sworn translation of the agreement.
Under the IP Code, as a fall-back option, it is possible to file a declaration in place of filing a copy of the agreement (dichiarazione di avvenuta cessione), even though the UIBM may also require that the declaration is notarised by a public notary and subsequently legalised.
Article 140 of the IP Code provides that security rights over IP can be created only for cash receivables and Article 138 of the IP Code also requires inter vivos deeds that "create, amend or transfer... special privileges or security rights created under Article 140" over IP to be registered formally with the UIBM.
Article 138 of the IP Code speaks in relation to industrial inventions, trade marks and all other IP rights (except copyright), which are all subject to the same law for this purpose. If more than one security right is registered, they will be ranked according to the transcription date.
Security rights that are not transcribed will be unenforceable towards third-party purchasers, creditors and any trustees in bankruptcy.
The issue of what the nature of such security is — ie, whether a pledge or a mortgage — remains open under Italian law.
According to the prevailing Italian jurisprudence, real rights of security over IP should be deemed to be a pledge and specifically the special type of pledge over "rights other than receivables" (diritti diversi dai crediti) envisaged under Article 2,806 of the ICC.
A different current of jurisprudence, however, underscores that the legal framework applicable to pledges over IP is closer to the legal framework applicable to mortgages over personal property, which must be registered to be effective.
According to supporters of the first view, the reference to "special laws" in Article 2,806 of the ICC, and therefore in the IP Code, would allow derogation from the provisions of the ICC that govern the ordinary creation of a pledge, namely the delivery of physical possession. This works to allow the creation of a pledge over IP rights by way of transcription and without any transfer of physical possession.
Supporters of the second view, however, see the requirement for transcription in the public records (also with different rankings) as an element that renders security over IP rights more similar to mortgages than to traditional pledges (which is based on transfer of physical possession).
Thus, if it is a pledge, it is an 'anomalous' pledge and it is especially a 'transcribed' pledge that, in terms of formalities requested and rights attributed to creditors, is in practice very similar to a mortgage over personal property.
In conclusion, it is indeed clear that such security is atypical and sui generis, for which gaps in the applicable law will need to be addressed from time to time, applying by analogy the rules and principles of the ICC to the extent compatible.
The rules on the registration of trade mark assignments also apply to licences.
According to Article 23 (2) of the IP Code, a trade mark may be licensed, also on a non-exclusive basis, for all or part of the products or services for which it is registered and for the whole or part of the territory of the country, provided that, in the case of a non-exclusive licence, the licensee expressly undertakes to use the trade marks to distinguish the products or services equal to those traded or rendered in the territory of the country with the same trade mark by the holder or any other licensees. Licences must not result in deception with regard to characteristics of the products and/or services that are widely considered to be essential.
Article 23, (3) IP Code also states that "the owner of a trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in his licensing contract with regard to its duration, the manner of the trade mark's use, the scope of the goods or services for which the licence is granted, the territory in which the trade mark may be used, or the quality of the goods manufactured or of the services provided by the licensee." This provision of law implements the corresponding provision in Directive 2008/95/CE, Article 8 (2), which is very similarly worded.
The protection granted by Article 23, (3) IP Code allows the owner of the trade mark to benefit from a further defence, symmetrical and parallel to the contractual one, which is infringement action (including related precautionary measures).
See 2.3 Registration or Recording of the Assignment.
As with an assignment, a licence is subject to Article 138 of the IP Code and to the effects of registration determined by Article 139 of the IP Code.
A ‘perpetual’ licence, while held to be of indefinite duration, could be found to be terminable according to the general principles of the ICC. If the parties intend that the licence should not be capable of termination (at least for a specific period) then this should be stated expressly.
No response provided.
In receiving the application for registration of a trade mark, the UIBM examines the formal and substantive requirements set by Articles 7, 8, 9, 10, 11, 13 (1), 14 (1) letters (a) and (b) of the IP Code (the 'absolute grounds of refusal'). The UIBM does not carry out the examination in relation to novelty and prior rights of third parties (the 'relative grounds of refusal'), which shall be invoked directly by the right-holder in the opposition procedure.
Particularly, Article 176 (5) of the IP Code states legal grounds for the opposition as:
The deed of objection must be filed before the UIBM within three months from:
The deed opens the administrative proceedings before the UIBM, which lasts from 24 to 36 months.
After expiration of the above delay for filing an opposition before the UIBM, the same legal grounds could be invoked in an ordinary legal action before the judicial authority. The legal action before the judicial authority is instead mandatory to invoke an absolute ground of refusal (not considered by the UIBM) or the rights deriving from prior non-registered trade marks (Article 12 (1) letters (a) and (b) of the IP Code) or from well-known trade marks (Article 12 (1) letters (e) and (f) of the IP Code). However, such legal action is not an opposition procedure but a claim of nullity of a registered trade mark.
Article 177 of the IP Code sets the following list of parties legitimate to file the opposition:
If the opposing party is not established in Italy, the appointment of a representative domiciled in Italy for the procedure (trade mark attorney or lawyer) is mandatory. In other cases, the appointment is facultative (although it is very frequent).
As far as the costs are concerned, the average office duties are around EUR300. As far as the attorney fees are concerned, there is no official table of tariff for the sector; therefore the fees are agreed directly by the parties.
The opposition procedure is regulated by Articles 174 and following of the IP Code, and could be divided into five phases.
Deed of Opposition
The procedure starts with the deed of opposition, to be filed before the UIBM within three months from the date of publication of the registration (or from the equivalent publications set in Article 176, IP Code). The deed shall be in Italian and must contain:
The opponent shall pay the office duties, the lack of which implies the renouncement of the opposition.
Notification of the Opposition
Within two months from the deadline for filing the opposition, the UIBM examines the formal requirements of the opposition and notifies the opposition to the applicant for the registration of the trade mark opposed.
After the notification of the opposition, the parties have two months to reach an agreement; before that the UIBM examines the merit of the opposition ('cooling-off period'). The cooling-off period could be extended until twelve months upon joint request of the parties (Article 178, IP Code).
In the case that the parties do not reach any agreement, the opponent within two months from the end of the cooling-off period shall file the documents set by Article 176 (4) IP Code, ie:
The applicant for the registration of the trade mark opposed can lodge, within 60 days from the receipt of the above documentation from the opponent, a brief with the arguments that ground the rejection of the opposition and the eventual relative documentation. In the same brief the applicant could ask for proof of the effective use by the opponent of the trade mark that grounds the opposition (Article 178 (4) IP Code), to be filed within 60 days from the notification of such request.
After the deadlines for the above filings, the UIBM decides the opposition and, consequently, the registration of the trade mark opposed shall be confirmed or rejected (even only partially, for some of the products and services for which the registration was requested).
The decision of the UIBM could be appealed before the Board of Appeals within 60 days from the communication of the decision (Article 182, IP Code).
The Board of Appeals is the body of second instance in the UIBM formed by ten members chosen from judges of the Italian Court of Appeals and professors of law in Italian universities (Article 135, IP Code).
The procedure before the Board of Appeals is regulated by Article 136 of the IP Code. The parties each have 60 days to file the briefs and replies, with the relative documentation. The parties can ask to discuss orally the case at the hearing before the Board of Appeals (Article 136 (10), IP Code). The proceedings of the second instance is competent also in the merit of the decision of the first instance and the Board of Appeals can issue provisional measures in the case of serious and irreparable harm (Article 136 (17), IP Code).
The owner has several options to react against trade mark infringement depending on the scale and type of infringement, and the value of the infringed trade mark. The owner might commence civil and/or criminal proceedings, and can alert the customs authorities in the case of counterfeiting.
A range of interim measures is available in civil proceedings.
In proceedings on the merits, the right-holder can request declaratory judgment, definitive injunction, definitive removal from the market of the counterfeit goods, their destruction, assignment of infringing goods, publication of the judgment and award of damages.
No substantial difference exists between registered or unregistered trade marks in this respect, albeit unregistered trade marks are more often enforced though unfair completion claims and the burden of proof to enforce unregistered trade marks is more difficult.
As from 1 July 2003, specialised divisions, spread all over the Italian territory, have exclusive jurisdiction on IP matters. Article 2 of Law Decree No 1 of 24 January 2012 renames the Special Section in Industrial and Intellectual Property as the Special Section for Enterprises (Sezioni per le Imprese).
Infringement proceedings can be established before the forum of the alleged infringer (forum rei) or before the court where the infringement has occurred (forum commissi delicti).
Article 120 (1), IP Code expressly states that actions of nullity and/or infringement that are filed when the procedure of registration is still pending shall be suspended by the court until the UIBM issues the decision on the registration.
The alleged infringer is entitled to start a declaratory non-infringement action once the alleged infringer has received at least a cease and desist letter from the trade mark owner. The declaratory non-infringement action can be commenced in interim proceedings (Article 120(6bis), IP Code).
Article 120 (2) of the IP Code provides that the proceedings on the validity of the trade mark shall be brought before the court where (i) the defendant has its residence or domicile; if not applicable, where (ii) the plaintiff has its residence or domicile; or, if not applicable, (iii) before the Court of Rome. The domicile could be determined considering the domicile indicated in the trade mark registration form. In the case of claim of infringement, the proceedings can also be brought before the court where the infringement occurred.
The decision of first instance can be appealed before the competent Court of Appeal, which also has full authority to revoke the first decision on the merits.
The decisions of the Court of Appeal can be appealed before the Italian Court of Cassation only on certain grounds, therefore it is excluded a new scrutiny on the factual background of the dispute.
Although Italian law does not require the plaintiff to adopt formal conditions before a trade mark-related lawsuit (ie, a formal demand letter, warning letters, engaging in mediation), the plaintiff frequently sends a cease and desist letter.
The fighting parties in a trade mark dispute shall be represented by an attorney-at-law admitted to the Italian Bar. The only exception relates to proceedings before the Italian Court of Cassation, for which a specific qualification (cassazionista) is required. This qualification can now be obtained through an examination after accruing at least five years' experience as a lawyer.
According to Articles 129 and 131 of the IP Code and in compliance with the rules of the Italian Code of Civil Procedure concerning precautionary proceedings, a registered trade mark owner could request:
The granting of preliminary measures requires two fundamental conditions. Firstly, fumus boni iuris, which implies, on the balance of probabilities, the existence of infringement and 'apparent' IP right validity. In other words, full evidence of the infringement is not requested; in fact, fumus boni iuris implies that the claimant has to prove that he is entitled to enforce his alleged rights and that there are good reasons to believe that these rights are indeed being infringed by the defendant. Secondly, periculum in mora (urgency) needs a demonstration that the delay incurred in ordinary litigation will generate an 'irretrievable loss'. According to certain case law, periculum is in re ipsa whenever the infringement implies a concrete risk of passing off potentially irreversible and, at the same time, damage quantification is difficult.
According to general Italian civil proceeding law, the content of certain precautionary judgments can become stable without the need to start an action on the merits, upon the condition that the precautionary judgment is suitable to anticipate the content of the hypothetical final decision to be delivered by the judge at the end of a proceeding on the merits (Article 669-octies (6), (7) and (8) of the Italian Civil Proceeding Code).
With specific reference to Italian IP legislation, according to some scholars, the interim injunction (which prevents an entity from keeping an unlawful behaviour concerning an IP right) falls within the scopes of application of the above-mentioned rule set forth by Article 669-octies (6), (7) and (8) of the Italian Civil Proceeding Code. In particular, the content of an interim injunction (ie, the order to stop a determined behaviour) is mostly the same as one of an injunction ordered at the end of an action on the merits and, therefore, if none of the parties starts the action on the merit, the effects of the interim injunction remain stable, as confirmed by Article 131 (1-quarter) of the IP Code.
On the other hand, a different doctrine retains that the above-mentioned rule contained in the IP Code breaches the principles set forth in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), where it is stated that measures taken on an interim basis shall "cease to have effect, if proceedings leading to a decision on the merits of the case are not initiated within a reasonable period, to be determined by the judicial authority ordering the measures where a Member's law so permits or, in the absence of such a determination, not to exceed 20 working days or 31 calendar days, whichever is the longer" (Article 50 (6), TRIPs Agreement). Therefore, on the basis of the here mentioned theory, the party that obtained an IP interim injunction should go on the merits to try to stabilise the effects of the same injunction, in order to comply fully with the provisions of the TRIPs Agreement.
Italian procedural law does not provide for the option of filing protective briefs. A potential defendant may consider starting interim proceedings or proceedings on the merits requesting a preliminary declaration of non-infringement (or filing a revocation action for lack of genuine use).
When proceedings are pending and orders have been granted against the potential infringer, it may request the court to order a bond to be posted by the trade mark owner for compensation for potential damages.
Article 129 of the IP Code provides the search order (descrizione) in order to collect evidence before trial. The search order can be asked for as an interim measure, before the opening of the ordinary proceedings, or during the ordinary proceedings of infringement. The disclosure/discovery is enforced with a clerk of the court and a court's expert appointed by the judge. The disclosure/discovery order shall be confirmed by the judge in following a hearing with all the parties involved.
With main proceedings pending, the trade mark owner is entitled to request the infringer to disclose any information on the origin and distribution networks of the infringing goods or services advertised/marketed/sold ('right of information'). Such information might include the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers, and information on the quantities produced, manufactured, delivered, received or ordered, in addition to the price obtained for the goods or services thereof.
The claimant, in order to bring an action, has to serve upon the counterparty a writ of summons (atto di citazione).
The writ of summons is drafted and signed by legal counsel with authority (by power of attorney) to sign on behalf of his client.
The writ of summons must contain all the elements necessary to identify the claim and causes of action, and must contain the vocation in ius (summons to court).
Between service of the writ of summons and the date given for the first hearing, the defendant has at least 90 days (or 150 days in the case of a defendant residing abroad) to prepare its defence.
The writ of summons must be filed at the court after service in order for the case to be entered on the court register and assigned to a specific judge.
Italian ordinary civil proceedings are essentially 'written', based on the filing of pleadings exchanged between the parties and made up of a number of hearings fixed by law, each devoted to certain activities, which are outlined below.
After the statement of the defendant, the plaintiff can slightly modify or amend his or her claims, in light of the objections and possible counterclaim raised by the defendant; however, the plaintiff cannot submit a completely new claim (so-called mutatio libelli is forbidden).
The Italian legal system does not permit collective actions for trade mark proceedings.
There is case law in Italy in relation to right abuse and sham litigation, especially when the IP right is found null and void during the litigation itself. There is case law according to which sending a letter requiring the recipient not to put a product on the market may give rise to issues under Article 2,598 of the ICC (ie, the unfair competition law), given that a threat of litigation that is made in bad faith, or negligently in ignorance of a trade mark's invalidity, constitutes an unacceptable attempt to disrupt a market. In competition terms, a notice sent to a competitor's clients seeking to enforce IP rights that are subsequently declared void is considered automatically unfair competitive practice. This should not be automatically the case where the communication is not disclosed to third parties or where it is disclosed to third parties by the receiving party itself.
The necessary parties to an action for infringement are the trade mark owner (and other parties that appear in the trade marks registration, if any) and the alleged infringer.
The lawsuit can be started by the trade mark owner and/or its exclusive licensee. The trade mark owner can commence the action also enforcing the trade mark application.
Pursuant to the IP Code, the owner of an earlier trade mark, which has validity in Italy, is entitled to prohibit third parties to adopt a sign:
Purely descriptive use is allowed in Italy according to Article 21 of the IP Code.
In this kind of use, the sign is used as a trade mark, eliminating or at least reducing the chances of the use being found to be trade mark infringement. Under this principle, a party, even a direct competitor, may use another party’s trade mark to describe their own product or services. This typically happens in the case of patronymic trade marks that cannot prevent the use of the name of the competitor (if identical to the trade mark) in compliance with the principle of professional fairness in the market. In certain cases, it is not easy to draw a line between lawful and infringing uses.
The defendant can first try to deny the existence of a likelihood of confusion or prejudice to the notoriety of the well-known trade mark.
Besides, the defendant can allege that its use is purely descriptive according to Article 21 of the IP Code (eg, corresponding the trade mark to his or her personal name).
The defendant can also react with a counterclaim. The defendant can in particular object in relation to the plaintiff's trade mark respectively:
In interim proceedings, the defendant can also deny the existence of the periculum in mora.
Contrary to patent litigation, the role of experts in trade mark litigation is limited.
Frequently, however, market research by the parties is presented as evidence of consumer perceptions of the strength of the trade mark or the existence of the likelihood of confusion, but its usefulness may be called into question. Such evidence is commonly admitted by the courts, although the courts are not bound to follow the conclusions the research draws, not least because the questions posed are often fraught with bias. As a result, the courts will on occasion simply ignore such evidence.
There are few provisions related to criminal enforcement as the infringement of a trade mark, under certain circumstances, is subject to criminal and administrative sanctions,
The main rules are Articles 473 and 474 of the Italian Criminal Code and Article 127 of the IP Code.
If the infringement is particularly serious, criminal action based on these provisions may be brought by the public prosecutor, ie, without private prosecution. The criminal route is frequently invoked in Italy to induce a deterrent effect against the infringement.
The role of the public prosecutor is fundamental in the management of the case. In fact, the trade mark holder can only submit his complaint before the public prosecutor, who is free to decide what action should be taken. Besides, the public prosecutor can order special initiatives involving the criminal police in order to collect any sort of evidence by any legal means, in any place and at any time.
In certain circumstances, however, the infringement cannot imply a criminal condemnation for lack of willingness.
The trade mark owner may seek the assistance of the Italian customs authority to prevent the importation of counterfeit products.
With a view to eliminating international trade in goods infringing IP rights, the European Parliament and the Council have introduced Reg 608/2013/EU repealing the earlier Reg 1383/2003/CE. The new Regulation, which took effect on 1 January 2014, creates procedural rules for customs authorities to detain counterfeit or pirated goods.
The IP Code sets forth the actions for obtaining special remedies named nullità (nullity) and decadenza (revocation/cancellation) of the trade mark.
These kind of decisions are absolute and once the trade mark is finally declared null or cancelled, the judgment is binding erga omnes (when registered with the UIMB). Relative and absolute grounds for refusal correspond to the grounds for these kind of actions. Non-use may be raised as a ground in cancellation proceedings. Besides, deceiving trade marks can be cancelled.
The actions of cancellation and/or revocation can be brought only before the ordinary judicial authority.
The IP Code (Article 28) provides for the possibility of declaring an action seeking the nullity of a later trade mark to be time-barred when the owner of the earlier trade mark on which the application is based has been aware of the use of the later trade mark in the marketplace and has consented to its use for at least five years (convalida).
The grounds of cancellation are distinguished between absolute and relative grounds.
Absolute grounds of cancellation are ones in which there are no prior private rights or interests violated by the registration of the trade mark. According to Article 122 (1) of the IP Code, absolute grounds of cancellation could be invoked by everyone with a legitimate interest (eg, a competitor in the case of a deceptive trade mark) and by the public prosecutor.
Relative grounds of cancellation concern a prior right owned by a third party (eg, prior registered or non-registered trade mark). In those cases, the claim could be made only by the right-holder (Article 122 (2), IP Code).
The grounds of revocation are considered absolute grounds and therefore could be invoked by everyone with a legitimate interest and by the public prosecutor (Article 122 (1), IP Code).
According to Article 27 of the IP Code, the cancellation and revocation could be declared for part of the products or services to which the trade mark was registered.
In particular, a trade mark could be partially cancelled if it is used in relation to certain products or services, whilst it is not used for other products or services.
According to certain Italian case law, however, a trade mark cannot be cancelled, even partially, if it is used for similar products, whilst the use in relation to certain products only might not take the trade mark alive for non-similar products. Where a trade mark has been registered for more than one product or service and it is not in practice used for all of these, it may be deemed to be registered in respect only of these for which it has been used.
By contrast to the European Community law, the Italian courts have tended to find that such deemed non-registration never regards products and services that are similar to those for which the trade mark has seen genuine use, even if the classes of goods are drawn very widely. Where the trade mark is well known, the courts go much further. In such cases, use of the trade mark means the registration is not susceptible to revocation not only for the products or services for which it has been registered, but also for dissimilar products and services.
As a result, a well-known trade mark risks being considered capable of revocation, for any of its registered classes, only if its use has ceased completely in relation to all classes. Leading Italian academic authorities consider that harmonisation with European Community trade mark law means that while well-known trade marks are afforded greater protection, that should not mean they are not susceptible to being deemed non-registration for particular classes, but only to enjoy a greater protection in the case of infringement if the conditions of the broader protections are satisfied.
After a mark is registered, it is not allowed to be amended. Therefore, if a mark is under revocation/cancellation proceedings, amendments are not allowed. However, it remains possible to delete some items of goods/services.
Actions involving revocation/cancellation and infringement can be heard together before Italian courts.
Generally, the proceedings of the disputes related to trade marks are regulated by ordinary provisions of the Italian Code of Civil Proceedings.
Notwithstanding, Chapter III, Section I of the IP Code provides some special rules applicable only to IP-related disputes (included trade marks). See the previous answers re competent courts, jurisdictions and discovery.
Legal judges decide IP disputes and decisions are based only on the evidence before them.
The parties can settle the case at any stage and phase of the proceedings. The settlement could be reached before (to avoid the litigation) or after the decision (to avoid or modify the enforcement of the decision).
Generally, the settlement is reached through negotiations, also amongst lawyers. It is forbidden to disclose in court communications between lawyers concerning discussions on out-of-court settlement.
Alternatively, the parties can opt for a mediation through the service rendered by ADR entities. In the context of a legal dispute, the judge has the power to invite the parties to settle the case and can schedule a specific hearing for this purpose.
An infringement case can be stayed pending resolution of a validity attack in another forum (Article 295 of the Italian Code of Civil Proceedings).
The remedies are regulated by Articles 124-127 of the IP Code and they include (i) final injunctive relief and/or withdrawal from the market of the products with the infringing sign, with possible penalty for each day of delay in the enforcement of the measure; (ii) seizure or destruction of the counterfeiting products; and (iii) publication of the decision in the Italian press.
The owner may claim for damages. They can include the actual damage and the loss of profits, and could be quantified in three alternatives as follows:
In principle, the unsuccessful party shall be ordered to pay all costs.
The possible remedies do not vary depending on the types of different trade marks.
The proceedings of appeal in IP-related disputes are regulated by the general provision governing ordinary civil proceedings (Articles 323-359 of the Italian Code of Civil Procedure). The IP Code does not contain any special or derogatory rules.
In the Italian civil procedural system, the proceedings of second instance are a full-review appeal; therefore, the Court of Appeal can review the facts of the case, reopen the phase of discovery and proof (if strictly necessary), and revert the decision on the merit of the case or the interpretation/application of the law invoked.
There is not a timeframe fixed by statutory provisions.
The timing to reach a decision in second instance varies according to the complexity of the case, the possible reopening of the phase of proof and discovery, and the agenda of the judges. Generally, appeal proceedings last from two to four years.
Article 13 (4) of the IP Code provides that dilution — ie, the loss of distinctiveness of the trade mark that became the generic name of the product, as a result of the trade mark owner's conduct or inaction — could cause the revocation of the trade mark (Article 26 of the IP Code).
Regardless of genuine use, the holder may rely on the protection of well-known marks. This is used in principle by reference to Article 6-bis of the Paris Convention, referring to those marks that are known, regardless of their use in the country, to a large number of those involved in the production or trade or use of the goods concerned and is clearly associated with goods coming from a particular source. According to Article 12 (1) letter (b) of the IP Code, a trade mark that within the meaning of Article 6-bis of the Paris Convention is well known to the interested public, also due to the reputation acquired throughout the country through the promotion of a trade mark, shall also be considered as known in Italy. No specific threshold needs are to be met, neither in terms of percentage of population awareness, nor in terms of widespread recognition across the country. Nevertheless, to enjoy sufficient reputation a trade mark needs to be known by a significant section of the public concerned with the products or services that it covers, in a substantial part of the territory in which it is registered or used.
Special rules concerning geographical indications are set forth in Articles 29-30 of the IP Code.
Article 21 (1) letter (b) of the IP Code provides that geographic indicators (relating to specimen, quality, quantity, destination, value, geographical provenance, period of fabrication of the product or of rendering of the service and other characteristics of the product or service) shall not be restricted by the trade mark rights if their use is compliant with the principles of fair practices.
Persons whose function is to guarantee the origin, nature or quality of specific goods or services may obtain the registration for a specific trade mark as a collective mark and may grant the use of the mark to producers or traders. In Italy, therefore, collective marks and guarantee or certification marks converge in the one and only category of collective marks.
The use of one's own name or surname is allowed according to Article 21 (1) letter (a) of the IP Code and shall not be restricted by a third party's exclusive right in so far as such use is compliant with the principles of fair practices.
Typically the costs arising before the lawsuit are related to the collection of evidence, the warning letter and the eventual urgent proceedings before the ordinary lawsuit to obtain a relief or to conduct the discovery against the infringer.
In principle, lawyers and their clients can agree in writing different legal fees.
The most common legal fee structures are hourly rates, estimated fees with a cap and flat fees.
If no agreement has been reached, Italian law provides for a mandatory fixed tariff system, which sets out the amount of fees due by the client for every stage of the proceedings.
According to Article 91 of the Italian Code of Civil Procedure, the judge in the sentence condemns the losing party to reimburse the legal fees of the prevailing party. In the case that the judge held only in part or rejected reciprocal claims, the fees could be declared reciprocal compensated.
The parties of a dispute can opt for mediation through the service rendered by ADR entities. A mediation clause could also be inserted in a previous agreement concerning the licence or the assignment of a trade mark. Furthermore, in the context of a legal dispute, the judge can suspend the proceedings, ordering the party to attempt a mediation.
Currently, the predominant view that disputes concerning Italian intellectual and industrial property rights, including trade marks, can be resolved by way of arbitration finds its bases in Italian law. This is namely the notion that IP rights are disposable and, following a recent change in law, that IP disputes no longer require the involvement of the public prosecutor.
It is also possible to defer to arbitration matters involving liability in tort, subject to an agreement including a specific covenant that expressly provides that "future disputes relating to one or more specific non-contractual relationships will be deferred to arbitration." Often, however, the above wording is not included in arbitration clauses that govern trade mark licence agreements, which provide for arbitration exclusively in the case of disputes arising from the licence agreement.
The duplication of legal protections is a very complex issue pursuant to Italian law.
According to prevailing opinion, the same item may be protected at the same time as industrial design, copyright, unfair competition, trade marks and even as patents or utility models, if the necessary requirements are met.
One of the main effects of this potential duplication of legal protection consists of extending the duration of protection.