Trademark registration in Italy

Italy has the 3rd largest economy in the European Union, with many developed industries such as tourism, manufacturing, fashion and food. The economy is open, welcoming foreign investment and has many incentives for investors. Italy is located in the heart of the Mediterranean, which is the gateway to the European single market with more than 500 million inhabitants. A developed transport system, including seaports, airports and roads, helps connect Italy with its neighbors and the rest of the world. Italy is a country with a lot of potential for investment in economic development such as developed infrastructure, including road, railway, electricity and telecommunications systems, high-quality living environment, with a mild climate and beautiful natural landscapes and a relatively low cost of living compared to other European countries. In addition, the Italian government is making efforts to improve the business environment, minimize administrative procedures and create favorable conditions for businesses to operate. The legal and financial system is stable, ensuring safety for business activities. Therefore, more and more businesses are expanding their business scope in Italy, in order to be able to distinguish their brand from other competitors, businesses need to pay attention to the procedure for trademark registration in Italy. Viet An Law Firm would like to guide customers preliminarily the procedure for trademark registration in Italy through the article below.

Legal basis

• Industrial Property Code (Legislative Decree No. 30 of February 10, 2005, as amended by Law No. 102 of July 24, 2023);
• Other relevant legal documents

Definition of “trademark” in Italy

A trademark is a “mark” used to identify a company’s products/services and distinguish them from those of competitors. All signs, including: words, proper names, drawings, letters, shapes, colors, product shapes or packaging, or sounds, provided such signs are appropriate to distinguish one company’s products or services from others; and must be clearly indicated in the registration list in order to clearly and accurately identify the protected object to the owner.

Conditions for trademark registration in Italy

General conditions:

Distinguishability: The trademark must be able to distinguish the business’s goods or services from competitors. Trademarks must not be generic or describe the product itself.

Legal: The trademark must not violate public order or Italian morality.

Specific requirements:

Application: The business needs to submit an application with the UIBM, which includes its information, a list of goods/services to which the trademark applies, and a clear image or description of the trademark itself.

Newness: The trademark should be new in Italy. However, there may be some exceptions for trademarks that have been used abroad and filed in good faith.

Additional Note: Although registration is not required to claim trademark rights in Italy (widespread pre-use may be recognized), registration is strongly encouraged. It brings the assumption of ownership and simplifies enforcement if someone infringes a business’s trademark.

Trademark registration documents in Italy

The application dossier includes:

• Information that identifies the type of application, type, nature, name, description and color of the trademark to be registered.
• List of goods and services, classified according to the Nice Classification.
• Any right-of-way (if any).
• Personal information of the applicant.
• Any contacts (if any).

In addition, the applicant needs to attach: A copy of the trademark (in color or black and white).

Instructions for filing a trademark application in Italy

An applicant can file a trademark application in three different ways:

• Apply online: Fill out and submit an online application.
• Apply by paper:
  • Download the application form (available in Italian at https://www.mimit.gov.it/it/assistenza/domande-frequenti) and fill it out.
  • Apply in person at the reception counter of any Chamber of Commerce, Industry, Agriculture and Crafts.
• Mailing an application:
  • Download the application form and fill out the information.
  • Send the completed application at the following address: Ministero dello sviluppo economico, Direzione generale per la tutela della proprietà industriale – Ufficio Italiano Brevetti e Marchi (UIBM), via Molise, 2 – 00187 Rome (Ministry of Economic Development, Directorate General for the Protection of Industrial Property – Italian Patent and Trademark Office (UIBM), Molise Street, 2 – 00187 Rome).

Online Application Guide

To access the online application service:

• Access: https://servizionline.uibm.gov.it/ (in Italian).
• Sign up for an account on the portal.
• Resubmit the digitally signed form to receive login details that allow access to restricted areas.
• Log in to the restricted area using the login details the application holder receives, complete the application form and submit the application along with any subsequent requests.

Trademark registration fees in Italy

To submit an application, the applicant needs to pay stamp fees, administrative fees and filing fees (if any) at the Chamber of Commerce, unless exempted.

Stamp fee:

• Apply online: EUR 48.00 (flat fee)
• Paper application: EUR 16.00 for each of the 4 pages of application and appendix.

Administrative fees:

• EUR 101.00 for goods and services belonging to a class in the Nice Classification (if it is an initial application) – EUR 67.00 (if it is an extension application).
• EUR 34.00 for each additional class of goods and services in addition to the first class.

Note: When submitting a paper application, the applicant needs to pay an additional administrative fee of EUR 40.00 to the Chamber of Commerce.

Trademark registration in Italy through the European Union (EU) System

• The EU trademark provides uniform protection across all member states of the European Union.
• The European Union Intellectual Property Office (EUIPO) in Alicante (Spain) is responsible for registration.
• The initial term of protection of the EU trademark is ten years. It can be renewed indefinitely according to subsequent ten-year terms.
• Regulation (EU) No 2017/1001 of the European Parliament and Council of 14 June 2017 contains all legal provisions relating to EU trademarks.

Trademark registration documents in the European Union (EU)

Application form: The application form is downloadable from the European Union Intellectual Property Office (EUIPO) website. The applicant needs to complete information about the owner, trademark, and list of goods/services.

Brand image: Clear, sharp, fully branded images in JPG or PNG format, up to 2 MB in size.

List of goods/services: A detailed description of the goods/services for which you want to protect your trademark through the Nice classification system.

Registration fee: Basic fee: €850 for each additional class of goods/services the fee will increase by €150

Registration of trademark protection in Italy through the Madrid System

The Madrid system is a convenient and cost-effective Italian league for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• Italy joined the Madrid Accords on 15 October 1984.
• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Italy accessed the Madrid Protocol on 17 April 2000.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Applications consist of the Madrid Singles of Vietnamese origin and the Madrid Applications with Italian designations.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or Italian;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of classes of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration service in Italy of Viet An Law Firm

• Carry out the search and notify customers in writing the results of trademark search in Italy;
• Drafting dossiers and directly filing and monitoring the status of trademark filings in Italy;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in Italy;
• Assist in monitoring, representing the resolution of objections and feedback with intellectual property representatives carrying out procedures in Italy.
• Receive dispatches, certificates and hand over to customers (if any).

If you want to file a trademark application in Italy, please contact Viet An Law Firm for the most effective support!