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Italy Trademark Registration Procedures

Updated:2018-10-9 11:22:52    Source:www.tannet-group.comViews:47

Italy trademark registration is filed with the Italian Patent and Trademark office. All signs (word, device or shape) capable of being graphically represented and fulfilling the requirements of novelty, distinctiveness and lawfulness are registrable trademarks. An Italian trademark enjoys protection from the day the application is filed. It is therefore possible, from the day the application is filed, to obtain measures against any infringement of the trademark.

In Italy, a trademark registration lasts ten years from the filing date, and could be renewed from ten to ten years. However, please note that lack of use of an Italian registered trademark continued for 5 years following its registration can cause a trademark to lapse. The following are the procedures for registering a trademark in Italy.

1. Conduct Preliminary Search
Performing a trademark search is a crucial step before adopting a trademark. Trademarks are sought to protect the identity of a business/company. When a trademark search is conducted, the possibility of a trademark being similar to an existing trademark is checked, which may reduce the refusal risk by the Trademark Office in the examination stage.

2. File the Application
To file a trademark application in Italy, you need to provide:
(1) Applicant(s): Full name, nationality and address.
(2) List of goods/services: According to the International Classification of Goods and Services.
(3) Reproduction of a Trademark: In case of a figurative trademark or a word trademark with special display, a reproduction of said trademark in an electronically editable form, like JPG.
(4) Power of Attorney signed by the Applicant(s).
(5) Priority document (if priority is to be claimed).

3. Formal Examination
Once the trademark application is filed, the Italian Patent and Trademark Office carries out a formal examination on absolute grounds and does not examine the trademark on relative grounds.

The examination concerns the formalities (payment of taxes and regularity of the documentation filed) and some substantial grounds (like absence of descriptiveness and deceptiveness) but does not take into consideration the requirement of novelty (existence of former identical and similar trademark).

4. Publication and Opposition
Once the examination is concluded the mark is published on the Official Bulletin and third parties are given the opportunity to oppose to the registration of the same in force of previous rights with validity in Italy.

The opposition must be filed within the non-extendible period of three months from the date of publication on the Italian Official Bulletin.

5. Grant for Registration
If there is no opposition filed within the three month, the mark will be granted for registration and the Trademark Office will issue the certificate of registration accordingly.

Generally speaking, now a trademark is registered in about 9-12 months from the date of the application (assuming that there are neither objections nor oppositions).

In order to obtain trademark protection in Italy, you can also request registration in the entire European Union with one single application designated in Italy. This approach is quick and can grant trademark protection in all the EU member countries. Tannet can help you EU trademark as well if required. We will work out the most suitable solution according to your actual situation.

Contact Us
If you have further inquires, please do not hesitate to contact Tannet at anytime, anywhere by simply visiting Tannet’s website www.tannet-group.net, or calling Hong Kong hotline at 852-27826888 or China hotline at 86-755-82143422, or emailing to tannet-solution@hotmail.com. You are also welcome to visit our office situated in 16/F, Taiyangdao Bldg 2020, Dongmen Rd South, Luohu, Shenzhen, China.

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