ITALY Law and Practice Contributed by: Monica Riva, Alessandra Ottolini, Francesco Chierichetti and Giulia Ghidini, Legance
Acquired Distinctiveness Acquired distinctiveness, or secondary meaning, is established by showing that, through use, the relevant public perceives the sign as identifying the commer- cial origin of the relevant goods or services. Evidence may include: • duration and intensity of use;
• sounds; • position marks; • motion marks; and • other non-traditional signs.
Following EU reform, graphic representation is no longer required, but the representation must allow the subject matter of protection to be determined clearly and precisely. For this reason, signs such as smells or tastes remain difficult to register in practice. For non- conventional trade marks, the decisive factor is the perception of the relevant public and the sign’s ability to be perceived as an indication of origin. Unregistered Trade Marks Italian law recognises unregistered trade marks ( marchi di fatto ), but protection depends on actual use and reputation. A prior user may continue using the mark within the limits of prior use. If the sign has qualified reputation ( notorietà qualificata ), meaning reputation that is not merely local, it may also affect the novelty of a later conflicting registration and support invalidity or opposition arguments where confusion is likely. There is, however, a line of case law and legal scholarship that recognises de facto rights as genuine rights in their own respect – albeit untitled – rather than merely as a basis for invalidating a subsequent registration; conversely, another strand of case law frames their protection within the scope of unfair competition. 2.2 Requirements for Trade Mark Protection The essential requirements for trade mark protection are distinctiveness, novelty and lawfulness. The sign must make the goods or services of one undertaking distinguishable from those of others. Generic, descrip- tive or customary signs are not registrable unless they have acquired distinctiveness through use. Novelty is lacking where the sign conflicts with earlier trade marks or other earlier distinctive signs and the conflict creates a likelihood of confusion, including a likelihood of association. For marks with reputation, protection may also extend to situations where the later sign takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the earlier mark. A mark must also be lawful and not contrary to law, public policy or accepted principles of morality.
• sales figures; • market share; • advertising investments; • media coverage; • consumer surveys; and • other proof of recognition. Famous and Well-Known Marks
Famous or well-known marks may be protected in Italy even if not registered locally, provided that their well-known status or reputation is established among the relevant public in Italy. Well-known marks under Article 6-bis of the Paris Convention may prevent or invalidate later conflicting filings. Marks with reputa- tion may also receive broader protection against dilu- tion, tarnishment or free riding, including in certain cases for dissimilar goods or services. 2.3 Trade Mark Registration System The rights may be exercised on the basis of the trade mark application itself, as the subsequent grant has retroactive effect. Unregistered marks may be enforce- able where prior use and reputation are proven, but registration provides stronger, clearer and more read- ily enforceable rights. Filing Procedure National trade mark applications are filed with UIBM, online or through authorised filing channels. The appli- cation must identify the applicant, provide a clear rep- resentation of the sign and list the goods and services according to the Nice Classification. Italy allows multi- class applications. UIBM examines formal requirements and absolute grounds for refusal, including distinctiveness, law- fulness and the proper identification of goods and services. It does not conduct an ex officio search for earlier rights. If objections are raised, the applicant may respond within the deadline set by the Office.
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