Trade Marks 2021 Comparisons

Last Updated March 03, 2021

Law and Practice

Authors



Legance – Avvocati Associati is an independent law firm with offices in Milan, Rome, London and New York. Founded in 2007 by a group of acclaimed partners, Legance distinguishes itself in the legal market as a point of reference for both clients and institutions. Currently, Legance has over 280 lawyers. Due to its strong international practice, Legance can support clients over several geographical areas, and can organise and co-ordinate multi-jurisdictional teams whenever required. The intellectual property department advises Italian and foreign corporations over the protection and exploitation of their intellectual and industrial property rights: copyright, trade mark, patent, unfair competition and design law. The team is one of the few offering fully fledged assistance services and also provides advice on extraordinary transactions and financing operations involving interests on IP rights, and has gained experience in a wide range of fields.

Trade marks are regulated by the Italian Legislative Decree No 30/2005, Code of Industrial Property (IPC), which was recently amended by Legislative Decree No 15/2019, implementing EU Directive 2015/2436, and by Law No 58/2019, named “Growth Decree”.

Case law sets forth the legal principles according to which the statutory rules are construed, but decisions are not binding.

Italy is a party to all major international agreements and conventions including:

  • the Paris Convention for the Protection of Industrial Property Rights;
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights;
  • the Madrid Agreement and the Madrid Protocol on the International Registration of Trademarks; and
  • the Nice Agreement on the International Classification of Goods and Services.

With respect to trade marks and their function of source-identifiers, Italian law recognises individual, collective and certification marks.

Collective trade marks have the function of guaranteeing the origin, nature or quality of certain goods or services. With the implementation of Directive No 2015/2436, the ownership of collective trade marks has been reserved to "associations of manufacturers, producers, service providers or traders".

Certification marks are trade marks capable of distinguishing goods or services which are certified by the right holder in respect of origin, nature, quality, accuracy or other characteristics of the goods and services from goods and services which are not so certified.

The certification mark can consist of signs or indications that designate the geographical origin of the goods or services. In this case, UIBM may refuse the registration, when the trade marks applied for may create unjustified privilege or otherwise prejudice the development of other similar initiatives in the region. The registration of the certification mark made up of a geographical name does not authorise the owner to prohibit third parties from using the geographical name in trade, provided that such use complies with the principles of professional fairness.

Historical Marks

The Growth Decree sets forth the new category of “historical marks” (marchi storici). Specifically, Article 11 ter of the IPC sets forth that the owners or exclusive licensees of trade marks registered since more than 50 years or the continued use of which for more than 50 years can be proved, may obtain registration of the mark in the newly established register of historical marks of national interest, where the mark is used in relation to goods or services produced or offered by a national manufacturing company of excellence, historically “connected” to the Italian territory.

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.

Nature of the Sign

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 Article 7 of the IPC, a trade mark can be comprised of:

  • words, be they actual or fanciful,
  • drawings,
  • a person’s name,
  • numbers and letters in the alphabet,
  • sounds,
  • the shape of the product or its packaging,
  • colours and their combinations.

The IPC does not expressly mention the possibility for the applicant to file a trademark application for other types of signs, such as smell, position, movement, tactile and gustative marks. However, Legislative Decree No 15/2019 no longer requires the graphic representation of the sign in order to register it as trademark and this has broadened the scope of protection. See 4.1 Application Requirements.

All States party the Nairobi Treaty (26 September 1981) are under the obligation to protect Olympic symbols. Italy has ratified this treaty by Law No 434/1985.

Moreover, Law No 194/2005, “Misure per la tutela del simbolo olimpico in relazione allo svolgimento dei Giochi Invernali ‘Torino 2006’”, afforded protection to the Olympic symbol, that cannot be registered as a trade mark, without a written authorisation by the International Olympic Committee (Article 1).

Besides, Law Decree No 16/2020 (converted by Law No 31/2020), on urgent provisions for the organisation and the holding of the 2026 Milano-Cortina Winter Olympic and Paralympic Games, stated that the words “Milano Cortina 2026”, “Milano Cortina”, the Five Olympic Circles, the term “Olympic” and “Paralympic” and any other expression identifying the Games, may not be used unless specifically authorised in writing, as they are “Olympic Properties”.

Finally, pursuant to Article 10 of the IPC, emblems regulated by International treaties and symbols or emblems of a public interest cannot be registered as a trade mark, absent the authorisation of the competent authority.

Article 6 bis of the Paris Convention affords protection to the so called notorious or well-known trade mark (marchio notoriamente conosciuto).

Under its general meaning, if a mark used on products or services abroad is known in Italy, then that mark is able to prevent the registration of a confusingly similar trade mark in Italy, even though it is not subject to genuine use in our country according to Article 12 (1) letter (b) of the IPC.

Registered trade marks are protected for ten years starting from the application date and can be renewed for ten-year periods, indefinitely (Article 15 of the IPC).

Under Article 5 (1) of the IPC, the trade mark holder can no longer exercise control over goods that were launched on the Italian market with its consent, unless there are legitimate reasons to oppose further marketing of these goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

Italian case law (see, eg, Court of Milan, 3 July 2019, Sisley v Amazon) has established that the violation of a valid selective distribution system which provokes the selling of luxury products via online market-place may be a legitimate reason for preventing the exhaustion of trade mark rights acts if a serious concrete damage to the image of the trade mark derives from this distribution.

It is neither necessary nor mandatory for the trade mark owners to use symbols such as ® or TM. However, it is quite common in the course of trade to use them to denote that protection is claimed.

Pursuant to Article 2573 of the Italian Civil Code and to Article 23 of the IPC, a trade mark may be freely assigned.

Although no formality is required under the IPC, trade marks are usually assigned through an agreement and recorded with the UIBM, pursuant to Article 138 of the IPC.

A trade mark may be assigned in whole or in part (partial assignment), provided that it does not became deceptive for the public of reference. For further details, see 2.3 Registration or Recording of the Assignment.

Although no formality is required under the IPC, normally, licence agreements are entered into in writing and are often recorded with the UIBM.

According to Article 23 (2) of the IPC, 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 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 products or services equal to those traded 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) of the IPC 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 their 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".

A "perpetual" licence could be found to be terminable according to the general principles of the Italian Civil Code.

Any trade mark assignment or licensing concerning Italian trade marks – including the Italian portion of International registrations – must be recorded with the UIBM (Article 138 of the IPC). According to the main interpretation, absent the recording, the agreement is enforceable and binding for the parties but cannot be enforced against third parties.

It is not necessary to transfer any goodwill when assigning or licensing the trade marks.

The assignment of the trade mark application is allowed and shall be notified to the UIBM pursuant to Article 172 (2) of the IPC.

Besides, Article 23 of the IPC does not prohibit the licensing of the application.

Article 140 of the IPC provides that security rights over IP, including trade marks, can be created only for cash receivables and must be registered with the UIBM.

Security rights that are not recorded will be unenforceable towards third-party purchasers, creditors and any trustees in bankruptcy.

The issue of what the nature of such security is – whether a pledge or a mortgage – remains open.

The Italian system recognises registered and unregistered trade marks. Unregistered trade marks are protected provided they are perceived by the general public as a business identifier, reaching a “qualified reputation” (notorietà qualificata). This, often difficult, burden of proof is up to the unregistered trade mark owner.

If the unregistered trade mark is known at a local level only, the registration of a following identical or similar trade mark is permitted, but the owner of the previous unregistered trade mark is allowed to continue the use of the sign within the limits of such use (diritto di preuso).

A trade mark may become a source indicator also as a result of the acquisition of a secondary meaning, as a new and additional meaning that attaches to a descriptive or generic mark.

Typically, this will be the result of large, targeted investments in marketing, which may lead to a radical transformation in the consumers’ perception.

There are no different standards for registering different types of trade marks.

The Ufficio Italiano Brevetti e Marchi (UIBM) keeps the trade marks register, that is publicly available on UIBM's website.

The Growth Decree has established a new special register, also kept by the UIBM, for historical trade marks (please see 1.2 Types of Trade Marks).

It is normal practice to search for earlier trade marks. In Italy the principle of unity of distinctive signs applies; this means that identity and similarity must be assesses considering signs of different kinds (eg, trade mark and company name, or trade mark and domain name). In addition to trade marks register, it is advisable to scrutinise company names and domain names registers.

See 1.5 Term of Protection.

Once the ten-year period has expired, the owner has further six months to renew the trade mark, paying an extra delay fee. After this date, the trade mark is no longer renewable and a fresh trade mark application must be filed.

Once the trade mark is registered, no update or refreshing can be made. To the contrary, it is possible to renew the trade mark registration only for some classes, or to waive protection to some classes or to certain goods/services. See 4.6 Revocation, Change, Amendment or Correction of an Application.

With the implementation of EU Directive 2015/2436, the requirement of “graphical reproduction of the trade mark” was deleted. Forms of representation other than the graphical reproduction are now available to the extent they enable the competent authorities and the public to determine “clearly and precisely the subject matter of the protection granted to the right holder” (Article 7 of the IPC).

The materials to be filed by the applicant to represent the mark have been clarified by UIBM in its Circular No 605 as follows:

  • word marks, figurative marks, shape or three-dimensional marks, position marks, pattern marks, colour marks: representation of the mark in JPEG;
  • sound mark: representation of the mark in JPEG or MP3;
  • movement mark: representation of the mark in JPEG or MP4;
  • multimedia mark: representation of the mark in MP4;
  • hologram: representation of the mark in JPEG or MP4; and/or
  • other: representation of the mark in JPEG.

For legitimacy to register a trade mark, see 1.2 Types of Trade Marks.

The Italian system allows multiclass applications, but the specific products and services are to be claimed within the relevant class/classes.

According to Article 19 of the IPC, the applicant may obtain the registration of the sign used, or merely intended to be used, in the course of trade.

The filing of series mark in a single application is not permitted. Pursuant to Article 158 of the IPC, each application shall concern one single trade mark.

The UIBM does not consider the existence of earlier rights. The UIBM examines, however, compliance with Article 8 of the IPC on portraits and personal names, which concerns to some extent relative grounds for refusal, in particular:

  • people’s portraits cannot be registered as trade marks without the consent of the related people or their relatives;
  • people’s names that do not belong to the applicant can be registered, provided that their use does not damage the reputation of the owner; and
  • if notorious, people’s names and signs used in artistic, literary, scientific, political and sports fields, and names of slogans/events/non-profit organisations and their emblems, can be registered or used as trade marks only by the rights’ holders or with their permission.

Letters of consent can be provided, and can be requested by the UIBM, to allow registrations of portraits or names under Article 8 of the IPC.

Third parties may participate by filing observations or oppositions.

Pursuant to Article 175 of the IPC, any interested party may, without thereby assuming the status of party in the registration procedure, address written observations to the UIBM, specifying the reasons why a trade mark should be ex officioexcluded from registration.

Moreover, pursuant to Article 176 third parties may file oppositions. For details regarding the opposition proceedings and the persons entitled to file it, see 5 Opposition Procedure.

According to Article 172 of the IPC, the applicant may revoke its trade mark application, amend or correct non-substantial aspects of the trade mark application before the UIBM grants the registration, and 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.

Trade mark applications must concern one sign only; in the opposite, the UIBM assigns a term to the applicant to divide the application (Article 158 of the IPC).

Pursuant to Article 158 (3) of the IPC, any trade mark application having as its object several products or services may be divided in several partial applications in the following cases:

  • before a decision of the UIBM to grant registration (a “grant”) is issued;
  • when  proceedings brought against a grant is pending;

when appeal  against a grant is pending.

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.

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 UIBM may refuse registration on "absolute grounds of refusal" for the following reasons:

  • the sign is not distinctive and/or is not represented in a way to enable the competent authorities and the public to determine clearly and precisely the subject of the protection conferred to the holder (Article 7 of the IPC);
  • the sign consists of, or includes, personal names or portraits or other signs which are well known and used in the literary, artistic, scientific, politic or sport field (Article 8, of the IPC);
  • the signs have become of common use in the current language or in the practice of the trade, or the signs consist merely of the generic names of products/services or of any related descriptive indications (Article 13 (1) of the IPC);
  • if the subject of the application is a shape mark, or other mark, it cannot consist exclusively of a shape or other characteristic that results from the nature of the goods themselves, or a shape or other characteristic that is necessary to obtain a technical result, or a shape or other characteristic that gives substantial value to the products (Article 9 of the IPC);
  • the subject of a trade mark consists of symbols, emblems and flags protected by international treaties or of public interest, unless authorised by the competent authorities (Article 10 of the IPC); and
  • the trade mark is contrary to the law, public policy or morality and is able to deceive the public; for example, as to the nature, quality or geographical origin of goods/services, or includes designations of origin of geographical indications, traditional terms for wine, traditional specialities guaranteed, plant variety rights, which are excluded from registration pursuant to European or national legislation or international agreements (Article 14 (1) letters (a), (b), (c bis), (c ter), (c quater), (c quinquies) of the IPC).

In case of collective trade marks or certification trade mark, the marks shall comply with the requirements of Articles 11 and 11 bis of the IPC.

Objections based on lack of distinctive character may be rebutted by claiming acquired distinctiveness based on the secondary meaning doctrine, which shall be proved by the applicant.

Pursuant to Article 173 of the IPC, when the UIBM intends to refuse a trade mark application, it will assign the applicant a term, not shorter than two months, to submit its observations. If no observations are filed, the UIBM will reject the application. If the observations are submitted, the UIBM, after examination, either grants the registration or refuses it.

In case of refusal, the decisions of the UIBM can be appealed before the Board of Appeals (Commissione dei ricorsi) within 60 days as of its receipt by the applicant.

Board of Appeals decisions can be appealed before the Italian Court of Cassation only for violation of law according to Article 111 of the Italian Constitution.

Italy participates in the Madrid System. The UIBM examines international applications designating Italy according to the same rules valid for national trade marks (Article 171 of the IPC).

Notices of opposition must be filed before the UIBM within the un-extendable deadline of three months from:

  • the date of publication in the Official Gazette of the application considered recordable by the UIBM (Article 170 letter (a) of the IPC);
  • the date of publication in the Official Gazette of registration of a trade mark, the application of which has not been published (Article 179 (2) of the IPC); or
  • the first day of the month following the publication in the WIPO international trade mark gazette of the registration of the international trade mark.

Article 176 (5) of the IPC states the legal grounds for the opposition as follows:

  • the rights deriving from the registration of a national trade mark or a foreign trade mark with effect in Italy that is identical to the trade mark to be opposed and registered for identical products and services (Article 12 (1) letter (c) of the IPC);
  • the rights deriving from the registration of a national trade mark or a foreign trade mark with effect in Italy that is similar to the trade mark to be opposed and registered for identical or similar products and services (Article 12 (1) letter (d) of the IPC);
  • the rights deriving from the registration of a national trade mark or a foreign trade mark with effect in Italy that is identical or similar to the trade mark to be opposed, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, the trade mark has a reputation in the European Union or in Italy, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark (Article 12 (1) letter (e) of the IPC) – dilution can be claimed under this ground;
  • the rights deriving from trade marks which are well known in the sense in which the words "well known" are used in Article 6 bis of the Paris Convention that are identical or similar to the opposed trade mark, for identical, similar or non-similar goods and services where the conditions laid down in paragraph above are met (Article 12 (1) letter (f) of the IPC) –dilution can be claimed under this ground;
  • the rights deriving from designation of origin/geographical indications (Article 14 (1) letter (c bis) of the IPC); and
  • the lack of consensus by the natural or legal person entitled to the name, surname or personal image, in the case of registration of a trade mark of a name, surname or image belonging to a person different to the registrant (Article 8 of the IPC).

Article 177 of the IPC sets the following list of parties legitimate to file the opposition:

  • the holder of a prior trade mark registered in Italy or with validity in Italy (eg, the European trade mark);
  • the applicant for a registration of a national trade mark, if the application has been submitted before the application of the trade mark opposed, or the applicant for the extension of a foreign trade mark in Italy, if the priority of the foreign trade mark is precedent to the application of the trade mark opposed;
  • the licensee of the exclusive sign to be registered;
  • the natural or legal person entitled to the name, surname or personal image, in the case of registration of a trade mark of a name, surname or image belonging to a person different to the registrant (Article 8 of the IPC);
  • the holders of rights deriving from granted designations of origin and geographical indications; and
  • the applicants of designations of origin and geographical indications, where the designation of origin and geographical indication is not yet granted when the opposition is filed.

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  to costs, 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 IPC, and could be divided into five phases.

Notice of Opposition

See 5.1 Timeframes for Filing an Opposition. The notice shall be in Italian and contain:

  • details of the trade mark opposed;
  • details of the rights that ground the opposition; and
  • a very brief explanation of the legal arguments of the opposition (a more detailed explanation is usually provided at a later stage).

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 of the trade mark opposed (“First Communication to the Parties”).

Cooling-Off Period

The parties have two months as of the receipt of the First Communication to the Parties to reach an agreement ("cooling-off period"). The cooling-off period could be extended until twelve months upon joint request of the parties (Article 178 of the IPC).

Procedural Phase

If no agreement is reached, the opponent within two months from the end of the cooling-off period shall file its brief in support of the opposition along with the documents set by Article 176 (4) of the IPC, ie:

  • a copy of the application or certificate of registration of the trade mark or designation of origin/geographical indication on which the opposition is based, except for national applications or certificates, and, if it is the case, the documentation relating to the priority right or pre-existence of which it benefits, as well as their translation into Italian, if applicable;
  • any other documentation to prove the alleged facts; and
  • evidence of the legitimacy to file the opposition, should the prior right not be in its name.

The applicant of the trade mark opposed can lodge, within 60 days from the receipt of the above documentation from the opponent, a defensive brief and any relevant documentation. In the same brief the applicant could ask the opponent to provide evidence of genuine use of the trade mark enforced (Article 178 (4) of the IPC) within the time limit set by the UIBM.

Decision

The UIBM decides the opposition and, consequently, the registration of the trade mark opposed shall be confirmed or rejected (even only partially).

The opposition proceedings, and the Italian system in general do not provide for a proper “discovery phase”.

A motion practice system applies to opposition proceedings. Instead, before the Board of Appeal (Commissione dei Ricorsi), oral hearings are regularly scheduled.

The decision of the UIBM could be appealed before the Board of Appeals within 60 days from the communication of the decision (Article 182 of the IPC).

The appeal procedure is regulated by Article 136 of the IPC. The parties each have 60 days to file the briefs, replies and supporting documentation and can ask to discuss orally the case at the hearing before the Board of Appeals (Article 136 (10) of the IPC). The proceeding 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) of the IPC).

The action seeking the nullity/infringement of a later trade mark shall 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 (ie, convalida), unless it has been registered in bad faith (Article 28 of the IPC).

Italian trade marks may be declared invalid/cancelled on the basis both of absolute grounds and relative grounds.

Under Article 25 of the IPC, the trade mark is invalid and can be cancelled if it:

  • does not meet the requirements laid down in Article 7 of the IPC concerning distinctive character and clear ad precise representation in the register, or in Article 12 concerning novelty;
  • violates Articles 9, 10, 13 and 14, paragraph 1 of the IPC, concerning shape marks, emblems, generic names, lawfulness;
  • violates Article 8 IPC on personal names; and
  • was registered in the name of a person not entitled to registration (Article 118 (3) of the IPC).

Under Article 26 of the IPC revocation action can be brought on the following grounds:

  • if the trade mark becomes generic (Article 13 (1) of the IPC);
  • if the trade mark becomes illicit (Article 14 (2) of the IPC); and
  • as a result of lack of use for a five year period (Article 24 of the IPC).

Once the trade mark is finally declared null or revoked, the judgment is binding erga omnes (when the final judgment is registered with the UIMB).

Grounds of invalidity/cancellation are separated into absolute and relative grounds.Absolute grounds of cancellation are those where no prior private rights or interests are violated by the trade mark's registration. These may be invoked by any party that has a legitimate interest (including a competitor, in the case of a deceptive trade mark) or by a public prosecutor (Article 122 of the IPC).

Relative grounds of cancellation concern a prior right owned by a third party (such as a prior registered or unregistered trade mark, a personal name ore registration in the name of an untitled person). These may only be invoked by the relevant right-holder (Article 122(2) of the IPC).

Grounds of revocation are considered absolute grounds and may accordingly be invoked by any party with a legitimate interest or a public prosecutor (Article 122(1) of the IPC).

Further to the implementation of the EU Directive 2015/2436, the invalidity/cancellation and revocation actions may be brought before both UIBM and the court.

The above rules will however enter into force after 30 days as of the date of publication of an implementing decree of the Minister of Economic Development (Article 184 novies of the IPC) that must be issued by 14 January 2023.

According to Article 27 of the IPC, the invalidity/cancellation and revocation could be declared for part of the products or services for 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.

See 3.4 Updating or Refreshing Registrations.

Actions involving revocation/cancellation and infringement can be heard together before Italian courts.

The action seeking the nullity/infringement of a later trade mark shall 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 (ie, convalida), unless it has been registered in bad faith (Article 28 of the IPC).

A range of interim measures is available in the proceedings (ie, the injunction from manufacturing, trading and using anything infringing the right; seizure measures; recall from the market/destruction orders, assignment of the counterfeited goods).

In addition, when the proceedings ends with a final judgement ascertaining the counterfeiting, the right holder may obtain the confirmation of the effects of the interim measures as well as  the publication of the judgment and the compensation for damages.

As to the differences existing between registered or unregistered trade marks, it is debated whether the type of actions to be brought against the trademark infringement are the same. For a part of the doctrine, the typical protection of the registered trademark can be activated, for others, the unregistered trademark can be protected only on the basis of the discipline of unfair competition.

For details regarding claims for dilution and cybersquatting, see 8.4 Elements of Other Trade Mark Claims.

The necessary parties to an action for infringement are the trade mark owner/owners and the alleged infringer.

The lawsuit can be started by the trade mark owner and/or its licensee. After the last reform, the prior consent of the trade mark owner is necessary. In particular, the exclusive licensee is entitled to commence an infringement action if the trade mark holder, after being served by a formal notice, does not bring said action within appropriate time limits (Article 122 bis(1) of the IPC).

The trade mark owner can also enforce the trade mark application.

The Italian legal system does not permit collective actions for trade mark proceedings.

Although Italian law does not require the plaintiff to adopt formal conditions before a trade mark-related lawsuit is filed (eg, a formal demand letter or engaging in mediation), plaintiffs frequently send a cease and desist letter.

The claimant has to serve upon the counterparty a writ of summons (atto di citazione), drafted and signed by legal counsel with authority (by power of attorney) to sign on behalf of their client. It must contain all the elements necessary to identify the claim and the causes of action and contain the vocatio 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 to prepare a defence (or 150 days in the case where a defendant resides abroad). 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.

After the defendant has filed their defence, the plaintiff may modify or amend his or her claims, in light of the defence arguments and any counterclaim raised by the defendant. However, the plaintiff cannot amend the claim to a degree that is tantamount to submitting a completely new claim (that is to say mutatio libelli is prohibited).

A defendant in a trade mark action can initiate a lawsuit in response, submitting a counterclaim.

Trade mark matters are heard by 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).

The first instance decision may be appealed before the specialised section of 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 may be challenged before the Italian Court of Cassation only on certain grounds, therefore, there is heightened scrutiny on the factual background of the dispute.

Parties in a trade mark dispute must be represented and pleaded by a lawyer.

Actions of nullity and/or infringement that are filed when the trade mark application on which the actions are based is still pending shall be suspended by the court until the UIBM issues the decision on the registration (Article 120 (1) of the IPC).

Italian procedural law does not provide for protective briefs. A potential defendant may request a preliminary declaration of non-infringement (within interim or ordinary proceedings) or filing a revocation action for lack of genuine use or other grounds permitted by applicable laws.

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.

Italian law does not require formalities such as a cease-and-desist letters or mediation before commencing infringement proceedings; this said, it is common in Italy for the trade mark owner to send a cease-and-desist letter as a first action, in order to reach a solution – and stop the infringement – faster and without commencing judicial action. However, under Italian law, whilst the granting of injunction is based on strict liability principles (ie, regardless of any culpability), the compensation for damages can be awarded only if the infringing party have acted with malice or in a negligent way.

Disputes related to trade marks are regulated by ordinary provisions of the Italian Civil Proceeding Code. Chapter III, Section I of the IPC provides some special rules applicable only to IP-related disputes (included trade marks). Such special rules concern mainly jurisdiction, entitlement, as well as the available actions and remedies as described in 7 Initiating a Lawsuit and 9 Remedies.

Legal judges decide IP disputes and decisions are based only on the evidence before them. The parties do not have an influence on who is the decision maker.

Contrary to patent litigation, the role of experts in trade mark litigation is limited.

Descriptive use is a defence against infringement pursuant to Article 21 of the IPC.

Under Article 21, the trade mark owner cannot prohibit third parties from using in commerce, provided, in any case, that such use is compliant with the principle of professional fairness:

  • their name and address;
  • non-distinctive indications relating to the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; or
  • its own trade mark if it is necessary to indicate the intended use of a product or service.

Pursuant to well-established case law, trade marks may be confusingly similar even if they are not identical.

When assessing the risk of confusion, it may be necessary to consider which parts of the marks are relevant for the comparison, in other words, which parts are distinctive or not. In addition, several factors have to be taken into account:

  • the distinctiveness of the older trade mark;
  • its recognition and reputation on the relevant market;
  • the risk of association which can be made between the two signs;
  • the degree of similarity between signs and goods/services where the principle of interdependence applies – a lesser degree of similarity between goods or services may be compensated by a greater degree of similarity between signs, and vice versa; and
  • the perception of the relevant public, its degree of attention and knowledge.

Dilution

Intended as the association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark (dilution by blurring) or as the association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark (dilution by tarnishment), can be claimed in court by the owner of a famous trade mark. Moreover, Article 13 (4) of the IPC provides that 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 (“vulgarisation”) could cause the revocation of the trade mark (Article 26 of the IPC).

Cybersquatting

Intended as the registration, in bad faith, of domain names reproducing another person’s trade mark, usually well-known, for the sole purposes of appropriating the reputation of the trade mark and obtaining an unfair profit is not expressly mentioned under Italian law. However, Article 22 of the IPC, laying down the so-called principle of unity of distinctive signs, forbids the adoption of a domain name identical or similar to an earlier trade mark if, because of the identity or similarity between the commercial activity of the holder of the domain name and that of the trademark holder, there subsists a likelihood of confusion.

If the infringed trade mark is well known, its protection extends to non-similar activities, provided that there subsists a prejudice to the reputation of the earlier mark or an unfair advantage, without due cause, for the domain name holder.

Unfair Competition

Finally, the holder of the infringed trade mark may bring an action for unfair competition, under Article 2598 (3) of the Italian Civil Code, or may initiate an alternative dispute resolution proceedings to obtain the reassignment of the domain name.

According to Article 28 of the IPC, the holder of an earlier trade mark pursuant to Article 12 and the holder of a pre-use right on a trade mark having a reputation not purely local, who acquiesced, for a period of five consecutive years, in the use of a later registered trade mark identical or similar to it being aware of such use, may not claim the declaration that the later trade mark is invalid or to oppose to the use of the same for products or services for which the trade mark has been used on the basis of its earlier trade mark or of its prior use, unless the later trade mark was applied for in bad faith. The proprietor of the later trade mark cannot oppose the use of the earlier trade mark or to the continuation of pre-use.

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. The defendant can allege that its use is purely descriptive according to Article 21 of the IPC (eg, corresponding the trade mark to their personal name).

The defendant can also react with a counterclaim and can, in particular, object in relation to the plaintiff's trade mark respectively:

  • the nullity and/or the weakness;
  • the lack of genuine use; and
  • the fact that its filing has been made in bad faith.

There is, however, a lack of clear criteria for what constitutes bad faith. Opinions suggest that trade marks may be considered to be made in bad faith if they are not used but obstruct the registration of a third-party trade mark. In interim proceedings, the defendant can also deny the existence of the periculum in mora.

Another common defence in trademark infringement is descriptive fair use.

Article 129 of the IPC provides the search order (descrizione) 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 (CTU). The disclosure/discovery order shall be confirmed by the judge in a following 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 and/or 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.

As mentioned, 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.

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 IPC.

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.

In principle, lawyers and their clients agree legal fees in writing. The most common legal fee structures are hourly rates, estimated fees with a cap and flat fees.

Costs arising for the assistance in a trade mark dispute may vary depend on the dispute’s value, complexity of the matter, number of fighting parties. Fees may be agreed for individual phases or services or for the entire activity.

It is allowed to agree a percentage of the value of the business or on what is expected to benefit, not only in terms of strictly financial, the recipient of the service. Agreements whereby the lawyer receives as compensation in whole or in part “a share of the property” subject to the service or of the subject matter of the litigation are instead forbidden. If there is no agreement in writing, a fixed tariff system applies (Ministerial Decree No 55/2014).

The judge in the sentence condemns the losing party to reimburse the legal fees of the prevailing party (Article 91 of the Italian Civil Proceeding Code). Moreover, the Judge could condemn the losing party to pay an additional amount to the prevailing party, if the former acted or defended themselves in bad faith or with gross negligence (Article 96 of the Italian Civil Proceeding Code). In the case that the judge held only in part or rejected reciprocal claims, the fees could be declared mutually compensated.

Remedies are regulated by Articles 124-127 of the IPC and they include:

  • final injunctive relief from manufacturing, trading and using anything infringing the right, 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;
  • seizure or destruction of the counterfeiting products; and
  • publication of the decision in the Italian press.

Under Article 131 of the IPC, urgency measures are granted in any case of imminent violation of a right or risk of repetition thereof, even if the violation has been ongoing for some time.

The granting of preliminary measures requires two fundamental conditions. Firstly, fumus boni iuris, which 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. In other words, full evidence of the infringement is not requested. Secondly, periculum in mora (urgency) needs a demonstration that the delay incurred in ordinary litigation will generate an "irretrievable loss".

A typical defence on the defendant’s side is the lack ofpericulumor the tolerance of the owner, the absence of confusion in the market or the potential nullity of the enforced trade mark.

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.

The trade mark owner may submit a claim for damages. They can include the actual damage and the loss of profits.

According to the Article 125 of the IPC, the Court could quantify the damages following three alternatives, namely:

  • damages award to be evaluated (often after appointment of a court expert) on the basis of the following criteria (or combination of them):
    1. all negative economic consequences, including loss of profits suffered by the right-holder;
    2. counterfeiter’s profits and benefits; and
    3. in appropriate cases, non-economic factors, such as moral damages;
  • as an alternative, a lump sum based on equity (without the appointment of a court expert), but an award for loss of profits cannot be lower than a reasonable royalty; and
  • in any event, a trade mark owner's right to ask for the full recovery of the counterfeiter’s profits instead of compensation for damages (for loss of profits) or to the extent to which they exceed such damages.

Under Article 124 (3) of the IPC, the Court, with the judgement ascertaining trade mark infringement, may order the destruction of the counterfeiting products, if there are no particular reasons against it, at infringer’s expenses. The destruction of the products cannot be ordered, and the trade mark holder can only obtain compensation for damages, if the destruction of the products is detrimental to the national economy.

Likewise, pursuant to Article 129 of the IPC, the trade mark owner may request, as a preliminary measure, the impoundment of the counterfeiting products, including the means used to produce them and evidence concerning the violation.

Typically, the costs arising before the lawsuit are related to the collection of evidence, the warning letter and the possible urgent proceedings filed before bringing ordinary lawsuit to obtain a relief or to conduct the discovery against the infringer.

The judge, in the sentence, condemns the losing party to reimburse the legal fees of the prevailing party (Article 91 of the Italian Civil Proceeding Code). Moreover, the Judge could condemn the losing party to pay an additional amount to the prevailing party, if the former acted or defended himself in bad faith or with gross negligence (Article 96 of the Italian Civil Proceeding Code). In the case that the judge held only in part or rejected reciprocal claims, the fees could be declared mutually compensated.

Under Italian law, It is not strictly necessary to give a notice to the defendant before seeking relief. It is however frequent sending a cease and desist letter to notify an alleged trade mark-infringer.

This step is generally aimed at reaching an out-of-court settlement agreement. In any event, the pros and cons of sending warning letters should be assessed on a case-by-case basis.

In case of serious breaches, trade mark owners may decide to proceed ex parte to prevent the potential infringers from hearing about the action itself and destroying evidence of their involvement.

An order granted ex parte must, however, be confirmed at court after a regular trial hearing. 

A declaration of non-infringement is an effective measure whereby  a party may seek courts intervention to rule on their freedom to operate and use a trade mark.

If there are no particular reasons, a prevailing defendant is reimbursed for expenses and costs, but more frequently within the limits of the official tariffs.

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 Regulation 608/2013/EU, repealing the earlier Regulation 1383/2003/CE.

The possible remedies do not vary depending on the types of different trade marks.

The parties can settle the case at any stage and phase of the proceedings, and also prior to the trial to avoid the litigation. 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.

The parties can opt for a mediation through the service rendered by ADR entities. The judge has always the power to invite the parties to settle the case and can schedule a specific hearing for this purpose.

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 parties to attempt a mediation.

Currently, the predominant view is that disputes concerning Italian intellectual and industrial property rights, including trade marks, can be resolved by way of arbitration especially considering that, following a recent change in law, the involvement of the public prosecutor is no longer required.

An infringement case can be stayed pending resolution of a validity attack in another forum (Article 295 of the Italian Civil Proceeding Code).

Trial court decisions can be taken to the Court of Appel within 30 days as of the service of the first instance judgment or, absent the service, within six months as of the publication.

As to the duration of the appeal proceedings, there is not a timeframe fixed by statutory provisions. However, the appeal proceeding normally takes from two to three years to be decided.

The proceedings of appeal in IP-related disputes are regulated by the general provision governing ordinary civil proceedings (Articles 323-359 of the Italian Civil Proceeding Code). The IPC does not contain any special or derogatory rules.

Under Italian law, the proceedings of second instance are a full-review appeal; therefore, the Court of Appeal can review the facts of the case and reopen the phase of discovery and proof (if strictly necessary).

The duplication of legal protections is a very complex issue. According to prevailing opinion, the same item may attack different protection, if the necessary requirements are met. The duplication of legal protection may extend the duration of protection.

See 12.1 Copyright and Related Rights.

A personal name that has acquired notoriety (nome notorio) may only be registered as a trade mark by the name holder and some specified family relatives thereof.

The name of an individual that has not acquired any notoriety may be in theory registered by a person other than the name holder, except where that would result in harm to the individual's reputation, standing or credit.

In the conflict between a trade mark and a name, as a rule, the trade mark prevails, but the use of the name for descriptive purposes is always permitted.

Article 2598 (1) of the Italian Civil Code prohibits the use of names or distinctive signs that could provoke a risk of confusion with the names and signs lawfully used by competitors.

This provision further prohibits slavish imitation (imitazione servile) of a competitor’s product. 

Products that significantly resemble the overall appearance of well-known brands by combining the visual features of the original product, including its packaging and labelling, are called “look-alikes” and are typically protects under the general umbrella of unfair competition laws.

On 13 January 2021, the Senate Agriculture committee approved a bill that, among other innovations, introduces the marchio biologico (organic trade mark) to distinguish all organic products made with raw materials grown or bred in Italy. This project has the aim to make consumers more aware of the origin and the supply chain of products, with a view to “Made in Italy” protection.

Legislative Decree No 70/2003 regulates the service provider liability.

Special exemptions from the service provider liability are provided for the activities of:

  • mere conduit (Article 14);
  • caching (Article 15); and
  • hosting (Article 16).

Moreover, pursuant to Article 17, service provider shall not be subject to a general obligation to monitor the information transmitted or stored, nor to a general obligation to actively seek facts or circumstances indicating illegal activities.

In this respect, Italian Court of Cassation (see, Cass. Civ., Sez. I, 19 March 2019,No 7708) focused on the difference between passive and active hosting provider, who is defined as “the provider of information society services, who performs an activity which goes beyond a merely technical, automatic and passive service, and, instead, engages an active conduct, concurring with others in the commission of the offence”. Active hosting provider is obviously excluded from the liability exemption under Article 16 and is liable for the unlawful conduct of active concurring.

Nevertheless, in case of storage of information provided by a recipient, passive hosting provider is also liable on condition that:

  • it has actual knowledge of the illegality of the activity or information; and
  • it fails to take immediate action to remove the information or to disable access to it as soon as it becomes aware of such facts upon notice from the competent authorities.

There are no special rules or norms regarding trade marks as used in business.

Legance – Avvocati Associati

Via Broletto, 20
Milan
Italy

+39 02 89 63 071

+39 02 89 63 07 810

pmarzano@legance.it; mriva@legance.it www.legance.com
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Law and Practice in Italy

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Legance – Avvocati Associati is an independent law firm with offices in Milan, Rome, London and New York. Founded in 2007 by a group of acclaimed partners, Legance distinguishes itself in the legal market as a point of reference for both clients and institutions. Currently, Legance has over 280 lawyers. Due to its strong international practice, Legance can support clients over several geographical areas, and can organise and co-ordinate multi-jurisdictional teams whenever required. The intellectual property department advises Italian and foreign corporations over the protection and exploitation of their intellectual and industrial property rights: copyright, trade mark, patent, unfair competition and design law. The team is one of the few offering fully fledged assistance services and also provides advice on extraordinary transactions and financing operations involving interests on IP rights, and has gained experience in a wide range of fields.