Trademark’s registration procedure in Italy: a guide for startups

Trademark’ s registration procedure is an important phase of the founding of a new company or startup.

It is not easy for a startup founder to navigate the world of trademark registration. What is the procedure? What to watch out for? Who to contact and why? Or take care of it independently?

With this short guide we try to give a general overview of the procedure and the fundamental aspects to know.

In this article we will explain the steps to be taken to register the trademark in Italy, but also the procedure for opposing the trademark’s registration or the temporary extension of protection and renewal of the trademark and cases of trademark ending. We will also give some references of the costs related to registration either independently or through a qualified professional.

The procedures for applying for Trademark’s registration in italy

The preferable methods for submitting the application for trademark’s registration are in paper directly at a Chamber of Commerce or via the internet through website if the applicant is in possession of a digital signature. There is also an optional fast telematics procedure available for online filing, which reduces the time for a trademark application to be published. It is also possible to send the application by post, by registered mail with a return receipt, to the Italian Patent and Trademark Office (“UIBM”). However, the latter solution is not recommended by the UIBM, as it lengthens the time taken to assign the number and date of filing.

Each application shall be concerned with only one trademark and shall be drawn up, like all the related documentation annexed thereto, in Italian.

Below we will review in detail:

• The application for trademark’s registration
• Review of the application by UIBM
• The request to withdraw the registration application

The application for trademark’s registration

The main document to be completed is the application for trademark’s registration (Mod. MA-RI), available on the UIBM website in the Forms Section, which has different configurations depending on whether the application is submitted by the applicant, the representative, or an agent.

The application includes the following sections:

• Application identification data – In this section shall be included the data regarding the trademark itself. 
• Classification – The application shall contain the indication of the product classes for which registration is required, indicating both the number of the class according to the Nice Classification, and the list of products or services, clearly and precisely identified using the official terminology, within the class thus identified. At least one class must be indicated.
• Priority – This section should be completed only if the filing date of a previous foreign application or extension is claimed.
• Applicant – it is necessary to correctly enter all requested applicant data to make the registration application admissible.
• Elected domicile/Representative/Agent – In this section the elected domicile of the applicant shall be declared. This information is important for the determination of jurisdiction and for any service of documents by judicial or administrative authorities. In case of an application filed by a representative or agent, also the data of these persons are required.
• Documentation attached or subject to submission – In addition to the trademark representation on a separate A4 sheet, further documentation can be attached to the application.

Examination of the application

Once the registration application and relevant annexes has been received and the due taxes and secretarial fees have been paid, the Office shall examine the application to verify its admissibility and registrability in accordance with the law.

In particular, the procedure develops in several stages:

• Examination by the UIBM – The Office first verifies the admissibility of the application. If the application lacks the essential data, the application shall be automatically declared inadmissible. At this stage, in case of missing documents, the UIBM may also request to supplement the application within two months of notification. If the applicant complies, the receipt date of the supplement shall apply, in all respects, as the date of filing. Otherwise, the Office shall declare the application inadmissible. Secondly, the UIBM carries out a formal review of the application, verifying any data entered for the representative, if any, including the presence of the appointment letter, and those concerning any claim to registration priority. Positively passed the previous steps, the office carries out a technical examination, checking the fulfillment of law conditions for registration, and the lawfulness of signs for which registration is applied. If the UIBM detects critical issues, it informs the applicant at elective domicile indicated in the application, allocating time to answer. In case of non-response or in any case the answer does not allow the resolution of criticalities, the UIBM rejects the application.
• Publication – At the conclusion of UIBM review, the application is published in the appropriate Bulletin making it accessible to all interested parties.
• Comments from third parties or final concession – Within three months of publication, holders of earlier rights may object to the registration. In this case, an administrative procedure is opened to verify the reasons of the opposed parties. If the opposition procedure is concluded in favor of the applicant or, on the other hand, in absence of opposition from third parties, the trademark is registered, and the office issues the registration certificate. The registration certificates are digitally signed and directly sent via PEC/mail to the applicant.

The request to withdraw the application for trademark’s registration

Before the UIBM issues the trademark’s registration certificate, an applicant who is no longer interested in registering the trademark may submit a specific withdraw application with a duty stamp. The request can be transmitted to UIBM online, through the services portal, or it can be submitted directly to the Chamber of Commerce or sent to UIBM by mail. The application must contain all information necessary to identify the registration application to be waived. Once the withdrawal request has been submitted, a submission receipt shall be issued. The date shown in the receipt is intended to be the withdrawn date of the original registration application.

Operational arrangements for the procedure for opposing the trademark’s registration

Within three months of the publication of the application for trademark’s registration those who consider such an application to conflict with their own trademark or earlier right may object to the award of the trademark.

In particular, the owners of trademarks already registered in Italy or with effect in Italy from an earlier date are entitled to file an objection, therefore, filing the opposition application it is possible to enforce the existence of identical marks already registered in Italy or with validity in Italy, following an application filed earlier or being in force since an earlier date, for identical goods or services.

The persons who have filed an application for registration of a trademark in Italy on an earlier date or with effect in Italy since an earlier date pursuant to a priority right or a valid seniority claim are entitled to file an objection, so filing the opposition application is possible to enforce the existence of identical or similar marks already registered in Italy or having effect in Italy, pursuant to an application filed earlier or being in force since an earlier date, for identical or similar goods or services, if the identity or similarity between the signs and the identity or affinity between the goods or services, may create a risk of confusion for the public, or may also constitute a risk of association between the two signs.

 In case of the licensees are of exclusive use of the trademark, filing the opposition application is possible to enforce the existence of identical or similar marks already registered in Italy or having effect in Italy, following an application filed earlier or being in force since an earlier date, for identical, similar, or non-similar goods or services, when the earlier mark enjoys a reputation in European Union or In Italy and when the use of the next one, without a lawful right, would unduly benefit from the distinctive character or reputation of the earlier sign or would be detrimental to them.

The persons, bodies, and associations which hold rights over portraits of persons, names of persons and well-known signs such as person names, signs used in the artistic, literary, scientific, political, or sporting fields, names, and acronyms of events and those of bodies and non-profit associations, as well as their characteristic emblems, filing the opposition application is possible to enforce the existence of identical or similar trademarks already well known pursuant to Article 6a of Paris Convention for the Protection of Industrial Property, for identical, similar, or non-similar goods or services, when the conditions set out in the preceding paragraph are met.

The persons entitled to protect rights conferred by an origin designation or geographical indication, can file the opposition to enforce the fact that these are signs excluded from registration, in accordance with Italian or European Union legislation or international agreements on the subject to which the European Union or Italy is a party, relating to the protection of origin designations and geographical indications.

The persons who have filed an application for protection of an origin designation or a geographical indication, not yet granted at the time of filing the opposition can file the opposition to enforce the fact that consent to the registration of portraits or person names and renowned signs has not been granted.

The opposition proceedings, of an administrative nature, shall be brought before the UIBM in accordance with the following stages and procedures:

• Opposition application
• Formal control of the instance and off-period cooling
• Defensive Deductions
• UIBM decision

Opposition application

Within the term of three months from the issuance of registration application, the concerned parties have the right to submit an opposition application which, under penalty of inadmissibility if all requirements are not fulfilled, shall be written in Italian, justified and documented, and complete of:

• as regards the trademark subject of opposition: the applicant data, the number and date of the application and the goods and services against which the opposition is applied. The opposition may concern all or part of the goods or services for which the registration has been made.
• as regards the trademark or the right of the opposing party: the identification of the earlier trademark or right, as well as the goods and services on which the opposition is based.
• the grounds on which the opposition is based.

In addition, the act of appointment of the representative, if appointed, must be filed at the same time, otherwise the application shall contain a declaration of reserve of deposit, which in any case must take place no later than two months after the application filing. The filing of the opposition application is subject to payment of a fee.

Formal instance control and “cooling off” period

Upon receipt of the application and within two months from the deadline for submitting oppositions, the UIBM shall verify the formal admissibility of the opposition application and the payment of relevant rights. If the verification is successful, the UIBM informs the applicant that the opposition proceedings are started and grants the parties a period of two months called “cooling off period” – extendable at the joint request of the parties up to twelve months – to reach a conciliation agreement. If the parties reach an agreement, the opposition proceedings are terminated.

Defensive deductions

Once the “cooling off” deadline has been in vain passed without an agreement being reached, the parties begin an examination phase in contradictory.

In particular, the opposing party must file the following documentation within two months of the expiry of the “cooling-off “period:

• copy of application or certificate of registration of the trademark, the origin designation or geographical indication on which the opposition is based in case are not national applications or certificates, and, where appropriate, the documentation relating to the priority or seniority right which the opposing party enjoys, as well as their translation into Italian. In case of seniority, it must have already been claimed in relation to an application or registration of a European Union trademark.
• any other documentation proof of the adduced facts.
• the documentation necessary to demonstrate the legitimacy to file an objection, if the earlier trademark is not in the name of opposing party as per the Register kept by the UIBM, or the opposition is based on a designation of origin or a geographical indication.

The applicant, in turn, received the documentation, shall submit his defense deductions within the deadline set by the UIBM. In its defense deductions the applicant may request that the opponent, who is the proprietor of an earlier trademark registered for at least five years from the filing date or of the priority of opposing trademark, shall provide evidence that the earlier mark, on which the opposition is based, was effectively used in the five years prior to filing of the opposition application, or that there are legitimate reasons justifying non-use.

If the opposing party does not submit it infers within sixty days by documenting what is requested or, by submitting the deductions within the time limits, the UIBM considers that the evidence provided is not sufficient, the opposition shall expire.

Before taking a decision, the UIBM may invite the parties to submit further documents, deductions, and observations.

UIBM decision

Having assessed the arguments of the parties, the Office reaches a final decision, either by accepting in whole or in part the opposition – and therefore rejecting the application for trademark registration for all or certain commodity classes – or by rejecting the opposition and definitively granting the registration of trademark. The unsuccessful party may be ordered to pay the other party, in whole or in part, the costs incurred in defense. The parties have the right to appeal to the Board of Appeals against the decision thus issued by the UIBM.

Cases of trademark ending

Once the trademark has been registered, the protection conferred by the trademark may cease for several reasons, identified by law, which may depend either on the behaviour of the trademark owner or on actions by third parties against registration. Let us see what they are:

• Non-Renewal
• Decadence
• Waiver
• Other cases

Non-renewal

First, a trademark’s registration may be extinguished by missing renewal by the owner.

Decadence

The trademark may also lapse:

• by vulgarization, if the trademark loses its distinctive capacity, if, due to the inactivity of the owner or the behavior of proprietor, the trademark has become the generic name of the goods or services for which has been registered.
• by supervened illegality whether the trademark has become capable of misleading the public, as to the nature, quality or origin of the goods or services, because of the way and context in which it is used.
• whether it has become contrary to law, public order, or morality.
• for non-use if the trademark is not being effectively used by the owner, or with his consent, for an uninterrupted period of five years, unless there are legitimate reasons for justification.

If the grounds for revocation or invalidity of a trademark exist only for part of the goods or services for which the trademark is registered, revocation or invalidity shall apply only to that part of the goods or services. The UIBM does not declare the revocation of its own motion, but this finding results out of an investigation carried out in a judicial or administrative proceeding.

Waiver

The owner of a registered trademark may renounce, at any time, the trademark, filing a particular annotation application, with a duty stamp. To the application shall be attached an expressed declaration signed by the owner (in original or authentic copy), marked, and registered with the “Agenzia delle Entrate” office in charge. The application may be filed: electronically; at the Chamber of Commerce deposit; at the UIBM headquarters in Rome; by postal mail to the UIBM office in charge.

Other cases

Lastly, a trademark’s registration may be terminated in the event of subsequent invalidity declared at the end of an administrative proceedings at the UIBM, initiated by a third party, or because of a final Tribunal judgment establishing the invalidity of the registered trademark. In the latter case, the UIBM is informed about the outcome of the judicial proceedings, records the judgment, and reports it in the Official Journal.

The time extension of protection

The trademark’s registration shall last ten years from the date of payment of the filing fee for the first application. In addition, the effects of the trademark’s registration, from which derive the exclusive rights linked to the trademark, shall become effective from the day following the filing date of application. This means that, once an Italian trademark has been definitively granted the effects of registration come into force on the application date. In this way, the owner can also defend the trademark in respect of third-party requests which have taken place in the period between the filing of the registration application and the granting of the trademark.

The renewal of the trademark

The trademark’s registration must be renewed every ten years from the date of first filing, paying the registration fee and submitting the appropriate form with a duty stamp within the last twelve months before the expiry or within six months from the expiry date, paying in the latter case a late payment fine.

Beyond this time limit, the trademark is not renewable, and a new trademark application must be submitted.

The effects of trademark ‘s registration, in cases of renewal, run from the expiry date of the previous registration.

A renewal application shall be submitted according to the same procedure of the first registration application by the trademark owner or by his appointed representative, who takes over on the filing date of renewal application.

The renewal application cannot contain any change or modifications in respect of previous applications. Therefore, any change shall be brought to the attention of the Office through a dedicated request.

There are no limits to the repetition of trademark renewals.Therefore, a registered trademark has an indefinite duration if no cases of ending of the trademark right will occur.

How much does it cost a trademark’s registration

It is not easy to evaluate without specific information the cost of an Italian trademark registration, because there are many variables that contribute to the final amount calculation of taxes and secretarial fees which are due to the UIBM or the State and which depend on the scope and type of registration application which, in concrete terms, is intended to be submitted. In general, the items of expenditure to be considered are as follows:

• Stamp duties
• Government concession fees variable according to the type of trademark and the number of classes
• Secretarial rights
• Costs related to any letter of assignment

The registration application for an Italian individual trademark for a single class, submitted online through an authorized representative or agent appointed by an assignment letter, and requiring a simple copy, the registration costs are about € 200,00. If more than one commodity class are foreseen, either a genuine copy is required, or if the registration of the trademark includes further cases affecting the calculation of the taxes and fees to be paid, the costs will increase accordingly. Furthermore, additional costs for technical-legal advice, if any, shall be considered.

Registration independently or through qualified professional

The application for registration may be submitted directly by the applicant, without the support of an authorized representative or lawyer.

The only persons that can represent the applicant in front of the UIBM are the agents, Industrial Property Consultants registered in their Institute, or the lawyers registered in the lawyer bar. These professionals, appointed by the applicant to file the application for trademark registration, shall carry out all the necessary checks to ensure the correctness of the application.

Before the UIBM has granted the trademark, the applicant is entitled to correct the application in its non-substantial aspects.

Once registration has been granted, any personal data changes, waivers and limitations must be brought to the attention of the UIBM by means of a dedicated annotation application, while for changes in ownership of the trademark it is necessary to file a transcription application. Any substantial changes to the trademark or requests for changes of the required protection relevant to already defined product classes or goods/services must be made by submitting a new trademark application, in case divisional.

The support of a representative or consultant would be appropriate and advisable either when the UIBM detects critical issues in the application any or any opposition proceedings are opened against the registration application by third parties. Finally, any errors in the registration application result in a registration not suited to the real needs of entrepreneur or in any case risky, as it would be more easily attacked by third parties which can require that it is declared null and void or may cause its termination in other ways.

Conclusions on trademark’s registration procedure in Italy

If you are interested in Trademark’s registration, please read more on: Registering a trademark: why is important for startups and Trademark’s registration procedure internationally: a guide for startups.