ITALY Law and Practice Contributed by: Monica Riva, Alessandra Ottolini, Francesco Chierichetti and Giulia Ghidini, Legance
Publication, Opposition and Registration If the application is accepted, it is published in the Official Trade Mark Bulletin. Owners of earlier rights may file an opposition within three months from pub- lication. If no opposition is filed, or if the opposition is rejected or settled, the mark proceeds to registration. Timelines and Costs Where no objections or oppositions arise, registration commonly takes around 12–18 months. Costs depend mainly on the number of classes and whether profes- sional assistance is used. Opposition proceedings can significantly extend the timeline and cost. 2.4 Term, Use and Maintenance Italian trade mark protection lasts ten years from the filing date and may be renewed indefinitely for further ten-year periods. Renewal requires filing a renewal application with UIBM and paying the relevant fees, generally during the last 12 months before expiry. Late renewal is possible within a six-month grace period, subject to an additional fee. The renewed mark must remain identical to the registered mark; only a reduc- tion of classes or goods and services is permitted. A registered mark must be put to genuine use within five years from registration. Genuine use means real commercial use of the mark, by the owner or with its consent, for the registered goods or services and in a manner consistent with its essential function of indicating origin. Token, purely internal or artificial use is not sufficient. If the mark is not genuinely used within five years, or if use is suspended for an uninterrupted five-year period without proper reasons, it may be revoked in whole or in part. The burden of proving genuine use lies with the trade mark owner. 2.5 Trade Mark Rights and Limitations Registration gives the owner the exclusive right to use the mark in Italy and to prevent third parties from using, in the course of trade and without consent, identical or similar signs for identical or similar goods or services where confusion is likely. For marks with reputation, the owner may also prevent use that takes unfair advantage of, or is detrimental to, the mark’s distinctive character or reputation.
Use alone may also generate protection for an unreg- istered mark, but the scope depends on the extent and reputation of the prior use. A merely local unreg- istered mark generally gives only a limited right to continue that use. The main limitations and defences include: • descriptive use; • use of non-distinctive indications; • use of the name or address of a natural person; and • referential use necessary to indicate the intended purpose of goods or services, such as accessories or spare parts. These uses must comply with honest commercial practices, and must not be misleading or amount to use as a trade mark. Other defences include lack of confusion, invalidity, revocation for non-use and exhaustion. Exhaustion applies once the goods have been placed on the EEA market by the trade mark owner or with its consent, unless legitimate reasons justify opposition to further commercialisation. 2.6 Trade Mark Enforcement and Remedies Trade mark infringement occurs where a third party uses, without consent, an identical or similar sign in the course of trade in a manner falling within the scope of the earlier right. This includes use creating a likeli- hood of confusion, including association. For marks with reputation, infringement may also arise from dilu- tion, tarnishment or free riding, even where the goods or services are not similar. Italy does not have a common law passing off action as such, but similar conduct may be pursued through trade mark infringement, unfair competition and mis- leading commercial practices, depending on the facts. Trade mark disputes are heard by the specialised business courts, which also act as EU trade mark courts for EU trade mark matters. Civil, Criminal and Customs Remedies Civil remedies include:
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