The regulation of trade marks in Italy is set forth in Articles 2569–2574 of the Italian Civil Code and in Legislative Decree No 30 of 10 February 2005, the Italian Industrial Property Code (hereinafter, the CPI), which provides a comprehensive framework governing trade marks, including definition, requirements, grounds for refusal, rights conferred by registration and their limitations, as well as the available enforcement mechanisms.

These civil law provisions are supplemented by Articles 473 and 474 of the Italian Criminal Code, establishing criminal enforcement measures against counterfeiting.

The European Union trade mark is governed by Regulation (EU) No 2017/1001 of 14 June 2017.

Regarding copyright and related rights, the relevant legal framework is contained in Articles 2575–2583 of the Civil Code and in Law No 633 of 22 April 1941 on the protection of copyright and other related rights (hereinafter, the LDA), which sets forth the rules governing the subject matter of protection, ownership, moral and economic rights, terms, management and enforcement.

Italian case law operates within the framework set by statutory provisions, interpreting, clarifying, and applying them, and is influenced by European Union jurisprudence.

Italy is a signatory to the Paris Convention, which established the fundamental framework for the international protection of trade marks. The Convention sets out, among other principles, the principle of national treatment, under which the nationals of each contracting State must be accorded in every other contracting State the same protection as that granted to the latter’s own nationals. Italy is also a party to the Madrid Agreement, creating a centralised filing system through which a single application may yield a bundle of national trade mark registrations, and to the Nice Agreement, providing a uniform international classification of goods and services for trade mark registration purposes.

Furthermore, Italy has ratified the Lisbon Agreement on the protection of designation of origin and, as a Member State of the European Union, has acceded to the Geneva Act concerning the international registration of geographical indications. Italy has also signed the TRIPS Agreement.

As regards copyright, in addition to the TRIPS Agreement, Italy is a party to the Berne Convention, which provides, inter alia, that authors shall enjoy in countries of the Union other than the country of origin the same rights as those granted to nationals of such countries.

All of the above conventions are not self‑executing but have been implemented through national legislation.

All signs capable of distinguishing the goods or services of one entity from those of other entities may be registered as trade marks, provided that they can be represented clearly and precisely. Such signs may consist of words (including names), designs, letters, numerals, sounds, the shape of the goods or of their packaging, and combinations or shades of colours. Based on their nature, trademarks are classified as: word marks; figurative marks; composite marks; colour marks; position marks; sound marks; and 3D marks.

The CPI also provides for collective marks, intended to distinguish the goods or services of multiple entities by reference to their specific origin, nature, or quality, pursuant to a specific regulation (disciplinare) filed with the application. The CPI further recognises certification or guarantee marks, whose purpose is to certify certain characteristics of the goods or services, subject to a specific regulation (regolamento d’uso) likewise filed with the application.

The registration of trade marks reproducing coats of arms, flags, emblems, and other signs protected under international conventions, or signs with a high political or symbolic value, is prohibited or subject to prior authorisation. Registration is also excluded for trade marks conflicting with designations of origin or geographical indications.

Italian law also protects unregistered (de facto) trademarks. Only de facto trademarks enjoying general notoriety receive protection equivalent to that of registered trademarks, whereas a locally known de facto trademark confers solely the right to continue using it within the limits of its local reputation.

The requirements for a trade mark are the following: (i) distinctive character; (ii) novelty; and (iii) lawfulness.

• Distinctive character – the ability for the public to identify the goods or services as originating from a specific entity. It may be inherent or acquired through use – the so-called “secondary meaning” – where a sign with a generic meaning has come to be associated with the trade mark owner. To prove secondary meaning, Italian case law requires market surveys demonstrating the shift in meaning of the sign from generic to capable of identifying the goods and services of its owner.
• Novelty – the sign must differ from earlier trade marks or prior distinctive signs of third parties. Article 12 CPI sets out the circumstances in which a trade mark cannot be regarded as new.
• Lawfulness – signs contrary to the law, ordre public or accepted principles of public morality cannot constitute a valid trademark.

Furthermore, deceptive signs – capable of misleading the relevant public as to the geographical origin, nature, or quality of the goods or services – cannot constitute a valid trademark.

Article 20 CPI, entitled Rights conferred by registration, expressly provides that the proprietor of the trade mark has the right to make “exclusive use” of the mark.

The article sets out three types of conflict in which the proprietor may prohibit third parties from using, in the course of trade:

• a sign identical to the trade mark for identical goods or services;
• a sign identical or similar to the trade mark for identical or similar goods or services, where there exists a likelihood of confusion; and
• a sign identical or similar to the trade mark for goods or services that are not similar, where the registered trade mark has a reputation, if such use would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the well‑known trade mark.

Article 20 CPI refers expressly to “use in the course of trade” when identifying the types of use that the trade mark owner is entitled to prohibit.

There are, however, certain limits to this exclusive right. The law recognises that some uses – although occurring within commercial activity – remain lawful provided specific conditions are met:

• the use of one’s own name or address, where the user is a natural person;
• the use of indications concerning the kind, quality, quantity, destination, value, geographical origin or time of production of the goods, or other characteristics of the goods; and
• the use of a trade mark to indicate the intended purpose of one’s own goods or services.

These are essentially “descriptive uses” and are allowed so long as they comply with the principles of honest commercial practice.

There is no provision requiring the proprietor of a trade mark to use any specific symbol (such as ® or TM) to indicate that the trade mark is registered or otherwise protected. The use of such symbols is entirely optional, and their omission has no impact on the legal protection afforded to the trade mark or on the possibility to recover damages.

A sign protected as a trade mark may also benefit from copyright protection, provided that the relevant legal requirements are met. In particular, the sign must satisfy the creativity requirement under the LDA.

A trade mark may consist of a personal name or surname, provided that its use does not harm the reputation, credit or dignity of the person entitled to bear such name. In any event, registration does not prevent the person who is entitled to the name from using it in its trade name. Where a third party holds an earlier trade mark consisting of the same name, the entitled person's use is restricted to descriptive use, in accordance with honest commercial practices.

In any event, signs whose use would infringe another party’s copyright, industrial property right or any other exclusive right cannot be registered as trademarks, nor is it permissible to use a trademark in a manner that infringes another party’s copyright, industrial property right or any other exclusive right of third parties.

Mere ideas as such can never be the object of copyright protection; only the expression of an idea is protected.

Article 1 LDA provides a broad definition of the subject matter of protection, identifying it in works presenting a creative character and belonging to broad phenomenological fields. The provision has been recently amended to specify that a work “may be protected even when created with the assistance of artificial intelligence tools, provided that they constitute the result of the author's intellectual work”.

Article 2 sets out an illustrative list of protected works, including: literary, dramatic, scientific, educational, and religious works; musical works and compositions; choreographic and pantomime works; works of figurative art; architectural works; cinematographic works; photographic works; computer programs; databases; and works of industrial design.

With respect to works of industrial design, the legislation still requires the existence of an additional requirement beyond creative character, namely that such works possess artistic value in themselves. Nevertheless it should be noted that due to the recent reform in the Design Regulation and Directive, this requirement will quite probably be eliminated.

In order to obtain copyright protection, the work must be externally expressed and must possess a creative character. Protection is limited to the expression of the idea and does not extend to underlying knowledge, ideas, information, or opinions. Creative character is reflected in the personal manner in which the author has constructed, organised, and realised the work – the so-called “personal imprint of the author (impronta personale dell’autore)”. The work must also be new, in the sense that it must not reproduce another work; otherwise, it would constitute “plagiarism”.

For industrial design works only, the law requires an additional element: “intrinsic artistic value”. This serves as a selective mechanism, reserving copyright protection only for works of “higher merit”, ie, “high-end design”.

The assessment of artistic value is left to the judge on a case‑by‑case basis. Over time, case law has developed a set of criteria to guide this evaluation, including: the recognition by cultural and institutional circles of artistic and aesthetic qualities transcending mere functionality and a mere pleasantness or elegance of form; the exhibition of the work in shows or museums; the existence of expert articles or design prizes; and the attainment of a high market valuation suggesting that the public attributes an artistic value to the work beyond its purely commercial worth.

According to the LDA, an author is the natural person whose creative activity originates the work. Following a recent amendment, works produced with the assistance of AI are protected provided they result from human intellectual effort; authorship cannot be attributed to non-human entities.

The author may dispose of the economic rights at any time, so that such rights may be acquired by a person other than the author upon completion of the work.

The Italian legal system does not recognise a general “work made for hire” doctrine: the author remains the natural person even within an employment relationship. However, for software and databases, unless otherwise stipulated, the employer is vested with the economic exploitation rights over works created by the employee in the performance of their duties, while the employee retains the right to be acknowledged as the author.

Joint authorship arises where two or more persons contribute to the creation of a unitary work through inseparable and indistinguishable contributions. Rights are held in co-ownership with a presumption of equal shares unless otherwise agreed in writing. The publication of an unpublished work, modifications, and exploitations “in a different form” from the initial publication (eg, transforming a book into an audiobook or a film) require the consent of all co-authors.

According to the LDA, the author is vested with economic rights and moral rights. The economic rights (Articles 12–19 LDA) include, inter alia:

• the right of communication to the public;
• the right of reproduction;
• the right of public performance or presentation;
• the right of distribution; and
• the right of elaboration/transformation (eg, translations, adaptations).

For works of the fine arts and manuscripts, an additional right is provided, namely the droit de suite (diritto di seguito), granting the author (and subsequently the heirs) a percentage of the resale price whenever a professional in the art market intervenes. Each economic right may be transferred by the author and transmitted mortis causa.

Moral rights (Articles 20–24 LDA) include: the right to claim authorship of the work, ie, the right to be identified as the author; the right to the integrity of the work, ie, to object to any modification that may be prejudicial to the author’s honour or reputation; and the right to withdraw the work from the market where serious moral reasons exist. Moral rights are inalienable and, after the author’s death, may be exercised “without time limitation” by the entitled parties.

Economic rights are of limited duration: as a general rule, such rights last for the lifetime of the author and for 70 years after the author’s death. For anonymous or pseudonymous works and collective works, the 70-year term runs from the date of first publication (or communication to the public) of the work. Should the author be disclosed within such term, the general rule applies. If, however, authorship is not revealed within the seventieth year following publication, at the end of the relevant period, the work enters the public domain.

Moral rights are inalienable and, after the author’s death, may be exercised “without time limitation” by the entitled parties.

Article 180 LDA exclusively reserves to the Società Italiana degli Autori ed Editori – SIAE (Italian Society of Authors and Publishers), a public associative entity, as well as to other collective management organisations and independent management entities, the activity of intermediation for the exercise of the rights of performance, execution, recitation, broadcasting and the mechanical and cinematographic reproduction of protected works. The rationale underlying the establishment of entities entrusted with collective rights management lies in the practical need to assist rights-holders in the exercise of their rights.

In practice, it is indeed difficult for each individual author or publisher to monitor and individually authorise every use of their work, particularly in areas involving large‑scale exploitation such as music dissemination or broadcasting. Accordingly, certain powers have been conferred upon these entities, namely: negotiating tariffs with users, issuing licences for the use of works, collecting the corresponding royalties, and distributing them to the entitled parties. In any case, the exclusivity of the powers granted to the aforementioned entities does not prejudice the right of the author, their successors or assigns, to directly exercise their rights.

Prior to the 2024 reform, the intermediation activity was reserved exclusively to SIAE and to collective management organisations. Following the CJEU judgment of 21 March 2024 in Case C-10/22 (LEA v Jamendo), which held that EU law precludes national legislation excluding independent management entities from providing copyright management services in another Member State, the Italian legislature amended Article 180 LDA by means of Decree-Law No 131/2024 (converted into Law No 166/2024), thereby opening the intermediation market to independent management entities.

Copyright protection arises automatically upon creation of the work; no constitutive formalities are required. However, a Public General Register of Protected Works exists, allowing authors to register their work to confer a certain and legally ascertainable date.

There is also a special register for computer programs, maintained by SIAE.

Registration may be requested by the author or successor in title if no publishing contract exists before commercial distribution. If a publishing contract is made, the publisher is in charge of the deposit.

An application for registration in the Public General Register must be submitted to the National Central Library of Rome, either in person or by post. The application requires two official forms, duly completed and signed, each bearing a revenue stamp, accompanied by a copy of the work. Additional formalities apply depending on the type of work.

The application for registration in the special register for computer programs must be submitted to SIAE, accompanied by the application form, a copy of the program on digital media, documentation certifying ownership and payment of the administrative fees.

The General Public Register of Protected Works, as well as the special register maintained by SIAE, conducts an exclusively formal examination. No substantive assessment is carried out regarding the creativity of the work. Any refusal may therefore result solely from missing documentation or failure to pay the required fees.

The Italian system allows the full cumulation of rights. Accordingly, the same sign may be protected both under copyright law and as a trade mark, provided that the requirements for each form of protection are met. Specifically, a sign already protected by copyright may also be registered as a trade mark, where it possesses creative character. Where the object of copyright protection is shape (eg, a work of industrial design), in order for it to also benefit from protection as a 3D trade mark, it is necessary that it does not consist of:

• a shape, or another characteristic, resulting from the nature of the product itself;
• a shape, or another characteristic, of the product that is necessary to obtain a technical result; or
• a shape, or another characteristic, that gives substantial value to the product.

Indeed, pursuant to Article 9 CPI, such shapes cannot be registered as trade marks.

According to Italian law, the constitutive element of a trade mark lies in its registration. The subject who registers a trade mark is entitled to its exclusive use for the goods and services for which it has been registered.

Nevertheless, the legal system affords protection to those who have used a sign without proceeding with registration (so called marchio di fatto). The degree of protection varies depending on the level of notoriety the mark has acquired among the relevant public through its use. Where the notoriety is “general”, any subsequent identical or similar trade mark will be invalid due to lack of novelty. Where the notoriety is merely “local”, meaning that the mark has been previously used within a territorially limited area, the holder of the sign will only be granted the right to continue using the sign within the relevant territory. The prior-used sign may coexist with any subsequently registered trade mark.

Even in the case of registration, use remains essential in order to maintain trade mark rights. Indeed, under Italian law, a trade mark must be used within five years from the date of registration, failing which it becomes vulnerable to revocation for non‑use, which may be claimed by any interested party.

In order to be eligible for the registration, all signs must be capable of being represented clearly and precisely, and must possess distinctive character, novelty, and lawfulness. However, with regard to 3D trademarks, the legal framework provides additional restrictions, excluding from registration as trade marks those signs consisting exclusively of:

• the shape, or another characteristic, resulting from the nature of the product itself;
• the shape, or another characteristic, of the product necessary to obtain a technical result; or
• the shape, or another characteristic, that gives substantial value to the product.

In Italy there is a trade mark register maintained by the Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi – UIBM) at the Ministry of Enterprises and Made in Italy (Ministero delle Imprese e del Made in Italy – MIMIT). The Register is publicly accessible through the UIBM database. Relevant information, such as filed applications, is also published in the Trademark Bulletin (Bollettino Marchi), which is likewise available on the UIBM portal.

It is, of course, advisable, before proceeding with a filing, to check for any prior rights in the databases, as well as to verify online the existence of any earlier de facto rights held by third parties.

The registered trade mark is valid for ten years from the filing date and may be renewed, without time limitation, for further ten‑year periods. The trade mark must remain identical to the one being renewed: no modifications to the graphical representation are permitted, nor may additional classes be added. The only permissible change is the reduction of the number of classes and/or the goods or services claimed.

To proceed with renewal, the relevant official fee must be paid within the deadline.

The renewal of a trade mark must be carried out before the expiry of the tenth year; however, it is possible to file a renewal application up to 12 months prior to its expiration. If the owner fails to proceed with renewal within the ten‑year term, the Italian law nevertheless provides a six‑month grace period. After this period, the trade mark can no longer be renewed, and a new application for trade mark registration must be filed.

The renewal takes effect from the expiry date of the previous registration.

The trade mark application may be filed electronically through the UIBM online portal, in paper form with the local Chamber of Commerce (CCIAA), or by postal service. The application must be accompanied by a representation of the trade mark and by the list of the goods and/or services claimed, identified in accordance with the Nice Classification, as well as proof of payment of the applicable fee. A single application may cover multiple classes.

The applicable fees are specified on the UIBM website and generally consist of a basic filing fee covering one class, with an additional fee payable for each extra class.

The Office conducts a formal examination and verifies the lawfulness of the application; however, no ex officio assessment of the novelty of the trade mark is performed.

Applicants are not required to demonstrate prior use of the trade mark at the time of filing.

A trade mark application may be filed by any party – natural persons, legal entities, associations, organisations, etc – including foreign applicants, provided they are domiciled in one of the EU Member States. The application may be submitted directly by the applicant or through a representative (industrial property consultants registered with the competent professional body or attorneys admitted to the Bar).

Applicants are not required to demonstrate prior use of the trade mark at the time of filing.

However, according to Italian law, a trade mark must be used within five years from the date of registration, failing which it becomes vulnerable to revocation for non‑use, which may be claimed by any interested party. The genuine use must be proved only if contested by a third party.

As regards the national applications, no ex officio assessment of the novelty of the trade mark is performed.

Instead, the European Union Intellectual Property Office (EUIPO), with regard to applications for registration of EU trade marks, carries out, upon request, a search of trade marks and pending trade mark applications that may conflict with the mark for which registration is sought and that could be invoked as relative grounds for refusal by the interested party.

It is possible to withdraw a trade mark application or to request its correction or amendment prior to registration; however, amendments are permitted only insofar as they relate to non‑substantial elements. The applicant may request the correction of clerical errors (eg, typographical mistakes in the representation of the trade mark or in the applicant’s or representative’s details, as well as spelling/typing errors in the list of goods and services), as well as the restriction of the designated classes or the limitation of the original list of goods and services.

With regard to figurative marks, improvements to image quality (such as resolution or contours) are allowed. Conversely, amendments that modify the colours, shapes, or arrangement of the graphic elements of the original mark are not permitted.

The UIBM does not allow amendments that alter the identity of the original trade mark or broaden its scope of protection; in such cases, a new application must be filed.

In addition to the corrections mentioned above, certain changes may also be requested during the application phase, such as changes to the applicant’s company name or address, as well as changes of representative.

Corrections of errors require a Request for Rectification (Istanza di Rettifica), while changes to personal or corporate data that do not affect ownership require a Request for Annotation (Istanza di Annotazione). Both may be filed either in paper form with the Chambers of Commerce or electronically through the UIBM online portal, directly by the applicant or through a representative.

According to the CPI, each application must concern only one trade mark. If an application covers multiple trade marks, the UIBM sets a time limit for the applicant to restrict the application to one trade mark only. For the remaining trade marks, the applicant may file a corresponding number of separate applications, which shall have effect as of the filing date of the original application.

Furthermore, any application for registration covering multiple goods or services may be divided by the applicant into two or more partial applications, in which the goods or services of the initial application are apportioned.

However, such division may be carried out only:

• before the Office has taken a decision on the registration of the trade mark;
• during any opposition proceedings against the Office’s decision; or
• during any appeal proceedings against the decision concerning the registration of the trade mark.

The request for division must be filed with the UIBM and must include the number of the original application, the applicant's details, and the respective lists of goods or services for the partial and original applications.

In practice, applicants typically seek division in cases of partial opposition or partial refusal, as well as in connection with assignment or licensing strategies involving specific goods or services.

The UIBM presumes that the applicant is entitled to the registration. The Office does not verify the accuracy of the information provided, except for the checks required by law or by international conventions. The applicant is therefore responsible for the correctness of the data submitted.

If the registration has been made in the name of a person other than the rightful owner, the latter may either obtain, by court judgment, the transfer of the registration certificate in his or her name with effect from the filing date, or seek the declaration of invalidity of the registration. Actions relating to industrial property rights shall be brought before the Specialised Business Sections (Sezioni Specializzate in Materia di Impresa) of the competent court.

In any case, the UIBM shall declare the application inadmissible:

• if the applicant cannot be identified or reached; or
• if, in the case of first filings, the application does not contain the representation of the trade mark or the list of goods or services.

The absolute grounds for refusal of registration – namely, those grounds relating to the nature of the mark itself and which may be examined ex officio by the UIBM – are as follows: lack of distinctive character; inability of the sign to be represented in the register in a clear and precise manner; and unlawfulness or deceptive character of the sign (signs that are contrary to law, public policy, or accepted principles of morality; signs liable to deceive the public as to the geographical origin, nature, or quality of the goods or services; as well as signs that evoke, usurp, or imitate geographical indications or designations of origin protected under national or EU legislation, may not be registered).

Where the application concerns the portrait of a person, the Office verifies that the consent of the person portrayed or of their heirs has been obtained. Where the application concerns the name of a person other than the applicant, the Office verifies that the trade mark is not liable to harm the reputation, credit, or dignity of the person entitled to bear that name.

Furthermore, where the application includes coats of arms or signs covered by international conventions, as well as symbols, emblems, or coats of arms of public interest, the Office verifies that express authorisation from the competent authority has been granted; in the absence of such authorisation, these signs may not be registered as trade marks. Words, figures, or signs detrimental to the image or reputation of Italy are likewise excluded from registration.

With regard to collective marks and certification marks, the Office carries out specific assessments to ensure that their registration does not result in an unjustified privilege and does not hinder the development of similar initiatives within the region.

Should the UIBM, in the course of its examination, identify any of the above‑mentioned grounds, it shall notify the applicant of the objections and set a deadline for a response. The applicant may reply with substantive observations or, in cases of lack of distinctiveness, by demonstrating acquired distinctiveness through use (“secondary meaning”).

In case of refusal, the applicant may always lodge an appeal before the Board of Appeals.

Italy is a member of the Madrid System. The Madrid System allows the applicant to file a single application with WIPO in order to obtain a bundle of trade mark registrations in the designated member countries. The applicant must have a national or EU basic application. The international application must correspond to the basic application with regard to the sign. As for the classes, goods, and services, the international application may be narrower but not broader.

Once WIPO receives the application and performs its formalities examination, it forwards the application to the national offices of the designated countries, which will examine it according to the same standards applied to national applications.

For the first five years, the validity of the international registration depends on the fate of the basic trade mark; after such period, the trade marks become independent. This means that if the basic trademark falls within the first five years, the international registration will also be cancelled.

An opposition may be filed before the UIBM within a peremptory, non-extendable time limit of three months from the date of publication of the application (or registration, where the application was not published) or, for international trade marks, from the first day of the month following publication in the WIPO Gazette.

Once an opposition is declared admissible, the parties are granted an initial cooling-off period of two months (extendable up to twelve months upon joint request) to negotiate an amicable settlement.

Revocation and invalidity actions may be brought before the UIBM or before the Specialised Business Sections of the civil courts. There is no general statute of limitations for filing such actions.

Under Article 176 CPI, an opposition may be filed on the basis of:

• earlier trade mark rights, including cases of identity or similarity of signs and goods/services giving rise to a likelihood of confusion, as well as cases involving earlier marks with a reputation (Article 12(1)(c)–(f) CPI);
• conflict with a protected designation of origin or geographical indication (Article 14(1)(c)-bis CPI); and
• lack of consent concerning portraits, personal names, or well-known signs (Article 8 CPI).

Pursuant to Article 26 CPI, a trade mark may be revoked for: (a) vulgarisation; (b) subsequent deceptiveness or illegality; or (c) non-use for five consecutive years following registration, absent proper reasons.

A declaration of invalidity applies where a trade mark was invalid ab initio. Absolute grounds include lack of distinctive character, shapes excluded from registration, prohibited signs, and deceptive or unlawful marks. Relative grounds arise from conflicts with earlier rights, including prior registered trade marks, copyright or other industrial property rights, and bad faith filing.

Italian trade mark law does not provide for a standalone “expungement” or “re-examination” procedure. However, the administrative invalidity and revocation proceedings before the UIBM, introduced following the transposition of Directive (EU) 2015/2436, serve a functionally equivalent purpose.

Opposition may be filed by the holder of an earlier trade mark (registered or applied for) effective in Italy, by the exclusive licensee, by persons holding prior rights under Article 8 CPI (portraits, personal names, well-known signs), and by parties entitled to protect designations of origin or geographical indications, including where the application for such protection is still pending.

Legal representation is not required before the UIBM, although opponents not domiciled in Italy must provide a domestic address for service. Official fees amount to approximately EUR250; attorneys' fees typically range from EUR2,000 to EUR8,000 for straightforward proceedings.

Standing to file a request for revocation or declaration of nullity before the UIBM depends on the ground invoked: any interested party may act on absolute grounds or non-use; only the owner of an earlier right may act on relative grounds; and only the legitimate owner may request nullity where the mark was filed by an unauthorised agent.

The opposition procedure before the UIBM is a purely administrative, inter partes proceeding, conducted entirely in writing without oral hearings or discovery. Following a formal admissibility check, the parties are granted a cooling-off period (two months, extendable up to twelve months). If no settlement is reached, the case proceeds through successive rounds of written briefs. The same procedural framework applies to revocation and invalidity proceedings before the UIBM. In all cases, the UIBM decides on the written record, and partial revocation or invalidity is possible. Decisions are appealable before the Board of Appeals (Commissione Ricorsi).

Decisions of the UIBM may be appealed before the Board of Appeals within 60 days from notification. The Board conducts a full review of the merits, primarily in writing. Its decisions may be further appealed before the Specialised Business Sections of the civil courts (within 60 days), and thereafter before the Court of Appeal and, on points of law only, before the Supreme Court of Cassation. As a general principle, decisions can be immediately appealed.

Pursuant to Article 184-sexies CPI, the trade mark proprietor may at any time request a limitation of the specification of goods or services, including during pending proceedings before the UIBM or the civil courts. Amendments altering the distinctive character of the mark are not permitted. In court proceedings, the owner may invoke such limitation as a defence, conceding partial revocation or invalidity while preserving the registration for the remaining goods or services.

Revocation and invalidity actions may be raised as counterclaims in infringement proceedings before the Specialised Business Sections, and the court typically addresses both issues in a single judgment. Where such proceedings are pending before the UIBM in parallel, the court has discretion to suspend the infringement proceedings. Significant timing differences may arise: UIBM proceedings typically take 12 to 24 months, whereas civil court proceedings at first instance may take two to four years.

A trade mark registration obtained in bad faith may be declared invalid pursuant to Article 19(2) CPI. Bad faith constitutes a ground for invalidity that may be invoked at any time, without limitation period, before the UIBM or the Specialised Business Sections. There is no automatic suspension of a registration pending investigation. The declaration of invalidity has retroactive effect.

Trade marks may be freely assigned, either together with or separately from the business, pursuant to Article 23 CPI, provided that the assignment does not render the mark deceptive. The assignment must be in writing and no prior UIBM approval is required. Partial assignments are permitted, provided they do not create a likelihood of confusion (Article 23(4) CPI). The assignment may concern a registered trade mark, a pending application, or an unregistered mark.

The economic rights of the author may be transferred in whole or in part, by contract or by operation of law, whereas moral rights are inalienable (Articles 20–24 LDA). Assignments of copyright must be in writing, and each transfer must be specifically identified.

Both trade mark rights and the economic rights attaching to a copyrighted work are transmissible mortis causa in accordance with the applicable succession rules.

Trade mark licences may be exclusive or non-exclusive (Article 23 CPI) and must be in writing to be enforceable against third parties, although an oral licence is valid as between the parties. No prior UIBM approval is required. Licences may be perpetual and may include archival rights. Pending applications may also be licensed.

Copyright licences may likewise be exclusive or non-exclusive, perpetual (subject to the overall copyright term), and may include archival rights. No prior governmental approval is required.

Assignments and licences of trade marks must be recorded at the UIBM to be enforceable against third parties (Article 138 CPI). An unrecorded agreement remains valid between the parties but cannot be relied upon against a third party who has acquired rights in good faith and recorded its own title first (priority of recording principle).

Italian copyright law requires the written evidence to enforce the assignment of the copyrighted work (Article 110 LDA) but does not require a mandatory registration system for assignments or licences. Registration in the General Register of Protected Works creates only a legal presumption of the facts stated therein.

Trade mark and copyright infringement actions are subject to the general five-year limitation period for non-contractual liability under Article 2947 of the Italian Civil Code, running from the date on which the injured party became or ought to have become aware of the infringement. Where the infringement is ongoing, the limitation period does not begin to run until the infringing conduct ceases.

Pursuant to Article 28 CPI, the owner of an earlier trade mark who has knowingly acquiesced in the use of a later registered trade mark for five consecutive years is barred from seeking invalidation or opposing its use, unless the later mark was applied for in bad faith. Moral rights under copyright law are not subject to any limitation period. As a civil law jurisdiction, Italy does not recognise the common law doctrine of laches.

Pursuant to Articles 20 and 22 CPI, trade mark infringement arises from: (a) use of an identical sign for identical goods or services; (b) use of an identical or similar sign for identical or similar goods or services where there exists a likelihood of confusion; or (c) use of an identical or similar sign for dissimilar goods or services where the earlier mark has a reputation and the use takes unfair advantage of, or is detrimental to, its distinctive character or repute. Holders of unregistered trade marks with a degree of renown may also bring infringement actions, although their protection is more limited in scope and territory (Article 12(1)(b) CPI). Italian law recognises both direct and contributory infringement.

To establish trade mark infringement, the claimant must prove: (i) the existence of a valid trade mark right; (ii) use by the defendant of an identical or similar sign in the course of trade in relation to goods or services; and (iii) a likelihood of confusion or, for reputation-based claims, unfair advantage or detriment to the mark's distinctive character or repute. Italian law also protects trade marks with a reputation against dilution, encompassing blurring and tarnishment (Article 20(1)(c) CPI).

Copyright infringement arises from the unauthorised reproduction, communication to the public, distribution, or adaptation of a protected work (Articles 13–18-bis LDA). The copyright owner must prove: (i) the existence of a valid copyright; (ii) that the defendant carried out exclusive acts without authorisation; and (iii) the absence of any applicable exception or limitation.

Italian copyright law also protects technological protection measures (TPMs) and copyright management information (CMI), in implementation of the WIPO Copyright Treaty and EU Directive 2001/29/EC. Under Articles 102-quater and 102-quinquies LDA, it is unlawful to circumvent TPMs or to remove or alter CMI, defined as any information identifying the work, the author, the right holder, or the terms and conditions of use.

The principal factors considered by Italian courts in trade mark infringement cases, in line with Court of Justice of the European Union (CJEU) case law, include: the degree of similarity between the marks (visual, phonetic, and conceptual); the degree of similarity between the goods or services; the distinctive character of the earlier mark; the relevant public and its level of attention; the overall impression on the average consumer; the likelihood of association; and evidence of actual confusion, where available. These factors derive from the combined application of Articles 20 and 12 CPI, interpreted in light of Italian and EU jurisprudence.

In copyright infringement cases, the key factors include: whether the claimant's work qualifies for protection (originality and, for industrial design, “artistic value” as interpreted by the Supreme Court in judgment No 7477/2017); whether the defendant reproduced protectable elements of the work; the degree of similarity assessed with reference to structure, composition, and creative choices; and whether the defendant had access to the claimant's work.

Italian law does not impose a mandatory requirement to send a formal demand letter before initiating infringement proceedings. However, the sending of unjustified warning letters or the initiation of unfounded proceedings may itself constitute an act of unfair competition under Article 2598 of the Italian Civil Code.

The exercise of trade mark or copyright rights may be limited by EU and Italian competition law. The abuse of a dominant position through IP enforcement – for example, vexatious litigation or refusal to license on FRAND terms – may be challenged under Article 102 TFEU and Italian competition law (Law No 287/1990). Furthermore, the abusive exercise of IP rights may constitute unfair competition under Article 2598(3) of the Italian Civil Code.

Trade mark and copyright infringement proceedings must be initiated before the Specialised Business Sections of the civil courts (Legislative Decree No 168/2003), which have exclusive jurisdiction over IP disputes. Cases are heard by a collegiate panel of three judges. The Specialised Business Sections are established at 22 courts throughout Italy for domestic litigation. Since 2014, in cases where one of the parties is a foreign one, then the option will be reduced to 11 courts.

Typical pre-filing costs include attorneys' fees, trade mark searches, notarisation of evidence, expert opinions, and court filing fees (determined under Presidential Decree No 115/2002). Parties must be represented by a lawyer admitted to the Italian Bar.

Foreign trade mark and copyright owners may bring infringement claims in Italy. For trade marks, the owner must hold a right enforceable in Italy (including unregistered marks with a degree of recognition, subject to the limitations of Article 12(1)(b) CPI). For copyright, foreign right-holders are protected under the principle of national treatment established by the Berne Convention and the TRIPS Agreement; registration is not required.

An alleged infringer may initiate declaratory judgment proceedings before the Specialised Business Sections, seeking a declaration that its conduct does not constitute infringement. Such proceedings are commonly initiated in response to cease-and-desist letters.

Italian law does not provide for protective briefs. However, a potential defendant may: initiate declaratory judgment proceedings; file a counterclaim for invalidity or revocation (or initiate separate administrative proceedings before the UIBM); request that the court require the claimant to post a bond for preliminary relief; or challenge the jurisdiction of the Italian courts.

Italian law does not provide a dedicated small claims court for IP disputes. All such disputes fall within the exclusive jurisdiction of the Specialised Business Sections. However, following the Cartabia Reform (Legislative Decree No 149/2022), a simplified procedure with reduced formalities and shorter time limits is available for cases of lesser complexity, including IP disputes.

Decisions of the UIBM are administrative in nature and do not have binding effect on the civil courts. As there is no copyright office exercising adjudicatory functions in Italy, this question does not arise in the copyright context.

On the civil side, counterfeiting constitutes trade mark infringement under Articles 20–22 CPI, giving rise to injunctive relief, damages, seizure, and destruction of infringing goods. On the criminal side, Articles 473 and 474 of the Italian Criminal Code punish the counterfeiting, alteration, use, importation, and sale of goods bearing counterfeit marks, with imprisonment of between six months and three years and fines of between EUR2,500 and EUR25,000.

Special measures to combat counterfeiting include: description and seizure of infringing goods; destruction or assignment of counterfeit goods; customs enforcement measures enabling detention of suspected counterfeit goods at the border; and investigations by the Guardia di Finanza and other law enforcement agencies.

Copyright counterfeiting involves unauthorised reproduction, distribution, or communication to the public of copyrighted works, with criminal liability under Articles 171-bis and 171-ter LDA. In the digital context, AGCOM may order the removal of infringing content and the blocking of access to piracy websites.

Bootlegging – the unauthorised recording and distribution of live performances – is addressed through the protection of performers' rights under Articles 80–85-bis LDA, in accordance with the Rome Convention, the WPPT, and EU Directive 2006/115/EC, and may give rise to both civil and criminal liability.

Italian IP proceedings are governed by the Code of Civil Procedure, supplemented by specific provisions under the CPI and the LDA. Two tracks are available:

• Preliminary (interim) proceedings: typically last six–nine months (including appeal). Courts assess urgency (periculum in mora) and prima facie claims (fumus boni juris) and may grant injunctions, seizure of infringing goods, astreinte, and market recalls.
• Main proceedings: typically last two–two and a half years and follow the reformed CPC timeline (three exchanges of briefs, hearings, and a possible court-appointed technical expert phase – CTU). Final remedies include permanent injunctions, market recalls, astreinte, assignment or destruction of infringing goods. Damages are usually assessed in a separate accounting stage, often involving a further CTU.

Since 2003 (Legislative Decree No 168), Italy has specialised IP divisions – now known as Tribunali delle Imprese – with exclusive jurisdiction over IP cases. Decisions are taken by a panel of three legal judges; there is no jury. The parties have no influence over the assignment of judges but may appoint their own party technical experts (consulenti tecnici di parte) to challenge or support the CTU's findings.

When a trade mark or copyright owner holds a registration, there is a presumption that the right is valid, existing and enforceable; accordingly, the burden of proving the contrary lies with the opposing party. Registration also provides a certified date establishing priority over later trade marks or works.

A bona fide prior user may, within certain product/service and geographical limitations, continue using a trade mark subsequently registered by a third party. Similarly, the author of a work contesting infringement of another work with a proven earlier date must demonstrate its previous and/or independent creation.

Court fees are paid at the time of filing and are divided into brackets depending on the declared monetary value of the case. Where the monetary value cannot be determined in advance – which is common, as damages are typically ascertained during the proceedings – the fee is fixed at approximately EUR1,000. The number of parties or IP rights involved does not affect court fees, although these factors may increase the complexity and therefore the costs of legal defence.

The defendant’s primary defence is a plea or counterclaim for the invalidity of the claimant's trade mark (Article 25 CPI). The main grounds for invalidity include: lack of distinctiveness, descriptiveness and generic nature (Article 13 CPI); contravention of public policy or morality (Article 14 CPI); and registration in bad faith (Article 19(2) and Article 25(1)(b) CPI).

Other frequent defences include:

• descriptive use: the trade mark owner may not prohibit third parties from using indications relating to the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristics of the goods or services, provided such use complies with the principles of professional fairness (Article 21(1)(b) CPI);
• use to indicate the intended purpose of a product or service (eg, compatible spare parts), provided it complies with the principles of professional fairness and does not cause confusion as to commercial origin (Article 21(1)(c) CPI);
• prior local use: a person who used the trade mark before the third party’s registration may continue using it within the area of prior use (Articles 12(1)(b) and 28 CPI);
• own-name defence: third parties may use their own name, provided such use complies with the principles of professional fairness (Article 21(1)(a) CPI); and
• acquiescence: if the owner of an earlier registered trade mark has tolerated, for five consecutive years, the use of a later registered trade mark while being aware of such use, it may no longer seek invalidation or oppose the use of the later trade mark, unless the latter was applied for in bad faith (Article 28 CPI).

The defendant may also invoke grounds for revocation of the claimant's trade mark:

• non-use for five consecutive years following registration, without just cause (Articles 24 and 26(1)(c) CPI);
• genericisation (volgarizzazione): the trade mark has become a generic name for the product or service, losing its distinctive character (Articles 13(4) and 26(1)(a) CPI); or
• subsequent deceptiveness: the trade mark has become capable of misleading the public as to the nature, quality, or geographical origin of the goods or services (Articles 14(2) and 26(1)(b) CPI).

The LDA sets out a closed list of permitted uses of a copyrighted work (Article 65 et seq.), including:

• quotation and reproduction of parts of a work for purposes of criticism, discussion, teaching, scientific research, satire and parody; and
• reproduction for personal use.

Exemptions also apply to public libraries, archives, and museums for non-commercial preservation purposes, and to persons with disabilities. Temporary reproduction or incidental copies that are an integral part of a technological process are likewise permitted.

The Italian Constitution (Article 21) guarantees freedom of expression. Accordingly, Articles 65 and 66 LDA permit the free reproduction or communication to the public of current affairs articles and materials of an economic, political, or religious nature, provided that reproduction has not been expressly reserved and that the source, date, and author’s name are indicated.

The reproduction or communication to the public of protected works in connection with current events is also permitted for the purpose of news reporting, within the limits of the informative purpose and provided that the source and author’s name are indicated.

The main factors considered by courts in distinguishing permitted use from infringement are: the purpose of the use; the extent and proportionality of the reproduction; whether the use competes commercially with the original work or unreasonably prejudices the right-holder's legitimate interests; whether the content relates to matters of public interest and serves informational rather than commercial purposes; and whether the source and author are credited.

Article 5 CPI establishes the principle of exhaustion of trade mark rights: once goods bearing the trade mark have been placed on the market by the owner or with its consent within the EEA, the owner may no longer oppose their further circulation. This principle does not apply where the owner has legitimate grounds to oppose further commercialisation, for example where the condition of the goods has been modified or altered after being placed on the market.

Italy follows the copyright exhaustion doctrine. Article 17 LDA provides that the distribution right is exhausted upon the first authorised sale or transfer of ownership of a physical copy within the EEA. Following such sale, the copyright owner cannot invoke the distribution right to prevent the resale, gifting, lending, or other transfer of that specific physical copy. Exhaustion applies only to the distribution right – other rights (reproduction, public communication, making available, adaptation) remain fully intact.

The application of the exhaustion doctrine to digital content remains highly debated. In practice, copyright owners of e-books, digital films, and music retain significant control over acts of use, reproduction and distribution, as users typically hold strictly personal, non-transferable licences rather than ownership of copies.

The primary form of injunctive relief is the prohibition order (inibitoria). Trade mark and copyright owners may apply for:

• Preliminary injunctions (inibitoria cautelare) – issued before or during main proceedings, ordering immediate cessation of the infringing acts (Article 700 CPC; Articles 129–133 CPI; Articles 156–162 LDA).
• Definitive injunctions – granted as part of the judgment on the merits (main proceedings), ordering permanent cessation of the infringing conduct.

The court may prescribe astreintes to ensure compliance (Article 614-bis CPC). Additional IP-specific remedies include: description orders (descrizione), consisting of a bailiff-supervised inspection of allegedly infringing goods or documents, often granted ex parte; seizure orders (sequestro) of infringing goods and production instruments, also often granted ex parte; recall, removal, or destruction of infringing goods (Article 124 CPI; Article 158 LDA); and publicity orders requiring publication of the judgment at the defendant's expense (Article 126 CPI; Article 166 LDA).

Italian IP law does not provide a specific freezing order; however, Article 671 CPC allows a general civil procedure measure to freeze assets (sequestro conservativo) to safeguard the future enforcement of monetary claims such as damages.

Italian judges have significant discretion in ordering remedies. Key criteria include: proportionality and balance of interests; the nature and scale of the infringement; the conduct of the parties; public interest; and the possibility of imposing conditions, time limits, or security requirements. Interim measures may be revoked or modified if circumstances change.

To obtain such remedies, the right owner must: demonstrate the validity and enforceability of its right; substantiate the alleged infringement with detailed legal and factual argumentation supported by available evidence; establish harm or imminent risk that cannot be adequately remedied by damages alone; and show that the relief sought is proportionate.

The defendant may oppose such claims by challenging the validity, existence, or exhaustion of the claimant's rights; proving good faith, legitimate pre-use, or independent creation; or demonstrating that the infringement has ceased or that the requested measure would be disproportionate.

Both the CPI (Article 125) and the LDA (Article 158) provide for the recovery of actual damages, encompassing: lost profits (lucro cessante); direct economic losses (danno emergente), including costs of reaction, damage to reputation, and loss of goodwill; and non-economic/moral damages. Damages are often quantified by reference to the “reasonable royalty” or “hypothetical licence fee” that the infringer would have paid. The right-holder may also claim the infringer's profits (retroversione degli utili).

Italian law does not provide for punitive damages, although wilfulness, gross negligence, recidivism, and bad faith are relevant factors in assessing damages. Courts have significant discretion in quantification: they may appoint a specialised accounting expert or determine damages equitably where the precise amount cannot be established. Italian law does not reserve specific damage remedies exclusively to registered rights-holders, although lack of registration may limit the availability of certain IP-specific remedies in practice.

Before and during the litigation, each party bears its own costs. The judge decides if the litigation costs (especially ones related to the legal defence, the court expert intervention, etc) shall be divided or entirely borne by the losing party. Certain costs, such as the “cost of reaction”, can be refunded as part of the damage suffered due to the adversary infringement.

Italian law permits ex parte interim relief (inaudita altera parte) in IP proceedings, including interim injunctions, seizures, and description orders. The court may grant precautionary measures without prior hearing where the applicant demonstrates that prior notice would prejudice the effectiveness of the measure and there is particular urgency.

As a safeguard, ex parte measures are carefully evaluated, are not final, and are subject to mandatory subsequent inter partes proceedings, ensuring that the defendant is always given prompt opportunity to contest them. Where the applicant fails to demonstrate that prior notice would jeopardise the measure, the standard procedure applies, with the court scheduling a hearing after service of notice on the defendant.

Italian customs enforcement is carried out by the Agenzia delle Dogane e dei Monopoli in coordination with the Guardia di Finanza. Goods suspected of infringing IP rights are subject to seizure.

Goods suspected of infringing industrial and intellectual property rights (so called merci contraffatte and merci usurpative) are subject to seizure.

Parallel imports do not necessarily constitute counterfeiting. Under the exhaustion principle, genuine goods lawfully placed on the market within the EEA by the trade mark owner or with its consent cannot be seized at customs. Similarly, pursuant to Article 1(5) of EU Regulation 608/2013, goods originating from outside the EEA but imported without the rights-holder's authorisation (“grey market” goods) cannot be detained at the border; in such cases, only an IP civil court order may authorise seizure, with customs acting as custodian pending the outcome of proceedings on the merits.

The customs seizure process requires the rights-holder (or their duly authorised representative) to submit an application to the competent customs authority.

Applications are submitted electronically via the IPEP portal (Intellectual Property Enforcement Portal).

The right-holder is asked to provide information on its ownership and subsistence of the right and has to provide description and identification of the industrial and intellectual property right(s) involved in order to enable customs to identify the genuine versus infringing goods (eg, distinguishing features, packaging, labelling, security marks, list of the manufacturers, distributors, and authorised licensees etc). Right-holders may also be asked to assume financial commitments (eg, bear costs of storage, handling, and destruction of detained goods, and to assume liability for damages caused to declarants/holders if the goods are ultimately found not to infringe).

Customs response times are usually very quick.

Customs officers may also act on their own initiative: in particular, when a customs officer suspects that goods infringing industrial and intellectual property rights are being imported, exported, re-exported, or placed under a suspensive customs procedure, the goods may be suspended from release or detained.

In this case, after notification, the right holder usually has ten working days to confirm whether the goods infringe intellectual property rights, and to consent to destruction or indicate that they are commencing legal proceedings.

The declarant/holder of the goods may submit observations.

Simplified proceedings are available in case the declarant/holder of the goods has not explicitly objected anything or in the case of goods sent in small consignments.

Decisions of the Specialised Business Sections may be appealed according to the general rules set forth in the CPC, without special provisions for IP proceedings. Appeals against interim measures are heard by the Tribunale (collegial panel), while appeals against decisions on the merits are heard by the Corte di Appello (Specialised Business Sections).

Decisions issued in urgent proceedings (eg, preliminary injunctions, seizures, description orders) may be appealed within 15 days (reclamo). In such proceedings, it is possible to introduce new facts and evidence. The judge schedules at least one hearing and normally issues a decision within a few weeks; no further appeal is allowed.

Decisions issued in ordinary proceedings may be appealed within 30 days from notification (or six months absent notification). In these proceedings (appello), new facts and evidence are generally inadmissible, and the grounds of appeal must specifically address the issues of fact or law allegedly neglected or misinterpreted by the first-instance judge. These proceedings typically last two to three years. The resulting decision may be challenged before the Supreme Court of Cassation on points of law only.

To date, there have been no landmark court precedents in Italy specifically concerning artificial intelligence in relation to trade mark and copyright laws.

However, in Cassazione civile, ord, sez I, 16/01/2023, n 1107, concerning a graphic work created using software, the court incidentally confirmed that the use of software does not per se preclude the creative nature of a work, although the extent to which the technological tool has overshadowed the author's creative process must be rigorously assessed. Accordingly, AI-assisted works – where a human author makes creative choices such as crafting prompts, selecting outputs, or post-processing content – may attract copyright protection, consistent with Article 1 LDA, which protects works that are the product of human intellectual effort.

With Law No 132 of 23 September 2025, the Italian legislature introduced provisions governing the research, development, and application of AI systems, promoting their transparent and responsible use from a human-centred perspective while ensuring oversight of economic, social, and fundamental-rights impacts.

Italian courts often adopt an “evolutionary” approach and, although not bound by foreign precedents, take into account EU and comparative case law when relevant.

Among the most common forms of online infringement of trade marks and copyright are unlawful acts committed on online marketplaces and content-sharing platforms, storage services (“cyberlockers”), streaming/peer-to-peer platforms, IPTV services, mobile applications, and social networks. Frequent cases also include cybersquatting/typosquatting, abuse of metatags and keywords, and the creation of websites or social media pages indistinguishable from legitimate ones (“look and feel” imitation).

ISPs have specific obligations to protect rights holders against IP infringements pursuant to EU and national regulations.

With particular reference to “mere conduit” ISPs, the Court of Milan has issued preliminary injunctions addressing illegal IPTV services (Trib Milano, decr 16/05/2019, n cron 1073/2019). Acknowledging that infringing sites frequently change IP addresses and domain names (“alias” sites), the Court issued a “dynamic injunction” allowing the right-holder to request ISPs to block new aliases upon simple notification, without the need to initiate new proceedings.

Rights-holders may also implement preventive measures such as digital watermarks, hash codes, fingerprints, and constant web monitoring.

SIAE has launched a blockchain-based platform (in partnership with Algorand) for more transparent and efficient management of authors’ rights, creating millions of NFTs to digitally represent the rights of its associated authors.