– Legislative Decree No. 198 of March 19, 1996, in compliance with the TRIPS Agreements.
– Legislative Decree No. 447 of October 8, 1999, in compliance with the Madrid Protocol.
– Legislative Decree No. 30 of February 10, 2005 (Industrial Property Code), as amended by Legislative Decree No. 131 of August 13, 2010, by the Decree of November 13, 2019, and by Law No. 102 of July 24, 2023, in force since August 23, 2023.
– Decree No. 33 of January 13, 2010 (Implementing Regulation to the Industrial Property Code), as amended by Decree No. 180 of July 19, 2022, published on November 29, 2022.
– Legislative Decree No. 15 of February 20, 2019 on collective and certification marks.
– Legislative Decree No. 34 of April 30, 2019, and subsequent Decree No. 10 of January 2020 on historical marks.

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Madrid Agreement Concerning the International Registration of Marks.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Stockholm Act.
– Nice Agreement Concerning the International Classification of Goods and Services, Geneva Act.
– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Stockholm Act, since December 29, 1968.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 20, 1977.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since February 11, 1978.
– European Union Trade Mark Regulation.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since April 17, 2000.
– Singapore Treaty on the Law of Trademarks, since September 21, 2010.
– Trademark Law Treaty, since April 26, 2011.

Applicant: any individual, firm, company, including holding companies, investment trusts, and national, regional, provincial, or local administrations.

Registration made in bad faith may be questioned in court (i.e. filing of trademark by the agent or the licensee, without the consent of the owner of the mark).

Collective marks: associations of manufacturers, producers, suppliers of services, as well as legal persons governed by public law, with the exclusion of private companies, may apply for collective marks.

Certification marks: any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified.

Geographical marks: registrable as collective and certification marks.

Special register for historical marks: the exclusive owners or licensees of trademarks registered for at least fifty years or for which it is possible to demonstrate continuous use for at least fifty years, used in connection with goods or services produced in a historically national company linked to the national territory, can obtain the registration of the trademark in the Register of historical trademarks of national interest.

Service marks: registrable.

Exceptions to protection: (1) signs containing badges, emblems and escutcheons, having a public interest and unless the public authority has authorized the registration thereof; (2) marks contrary to the law, public order, or morality; (3) marks which are the generic names of goods, or services, or descriptive indications of the goods, or services; (4) marks exclusively consisting of a shape which results from the nature of the goods, or is necessary to obtain a technical result, or attributes substantial value to the goods; (5) signs liable to deceive the public, concerning the geographical origin, nature or quality of the goods, or services, or use of which would constitute infringement of copyright, industrial property rights, or other exclusive rights of third parties; (6) geographical names which may create situations of unjustified privilege or prejudice the development of other similar initiatives in the region; (7) well-known marks, family names and portraits under the conditions specified below.

Novelty: novelty is a requirement for validity.

Definition: what may be registered as a trademark: any new sign capable of distinguishing the goods or services of one enterprise from those of other enterprises; and being represented on the Register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor, i.e. words, designs, letters, numerals, sounds, the shape of goods, or their packaging, color-shades, or combinations thereof.

National flags: not registrable, unless authorized by the competent authority.

Well-known marks: under the new provisions (TRIPS), the owner of an earlier trademark which is “well-known” may prevent the use of a later identical or confusingly trademark even for dissimilar goods or services where the use of such later trademark without due cause would take unfair advantage of the distinctive character or the repute of the earlier trademark.

Family names: registrable, provided that use does not prejudice the reputation of the person. However the Trademark Office may subject registration to submission of a declaration of consent by the person, whose name is being used; consent is compulsory in case of famous persons.

Portraits of a person: registrable only upon consent of the portrayed person.

Classification: International Classification.

Territory covered: Republic of Italy and Vatican (Holy See).

Filing requirements for an application (to be sent to registered resident agent):
1. Unlegalized power of attorney (term for late filing: two months);
2. 1 specimen of the mark (printed or in electronic format);
3. For Convention cases: date for priority claim to be provided at the time of filing; certified copy of basic foreign trademark application with declared translation (term for late filing: six months).

Electronic filing: available since June 1, 2006.

For a change of name or address: scanned copy of the document attesting the change. Legalization is not required.

Novelty examination: no novelty examination is provided for. However, the Trademark Office may reject the application for lack of distinctiveness or because registrability requirements (other than lack of novelty) are not met.

Representation before the Patent and Trademark Office: election of domicile in Italy is compulsory.

Amendments to pending applications: corrections of clerical errors are admissible subject to submission of evidence and to official approval. Restrictions in the statement of goods are also admissible.

Disclaimers: not available.  

Letters of consent: not accepted. 

Publication of applications: applications are laid open to public inspection, immediately after the filing date.

Opposition: possible.

Deadline for filing opposition: three months from the date of publication of the application (or registration granted on a priority basis) in the Official Gazette of the UIBM in the case of national applications or registrations; in the case of oppositions against an international registration (as far as the Italian trademark rights are concerned) the three-month deadline starts from the first day of the month following the month during which the international registration was published in WIPO’s Gazette of International Trademarks. The opposition term is unextendible.

Parties entitled to file opposition: (1) the owner or the exclusive licensee of an earlier trademark application or registration having effect in Italy against an identical trademark for identical or similar products and services; (2) the owner or the exclusive licensee of an earlier trademark registration or application having effect in Italy against an identical or similar trademark for identical or similar goods, if because of its identity or similarity with the earlier trademark and the identity or similarity of the goods or services there exists a likelihood of confusion; the likelihood of confusion includes the likelihood of association with the earlier trademark; (3) the owner or the exclusive licensee of an earlier registration which enjoys reputation in Italy against an identical or similar application, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trademark is registered, where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark; (4) persons, entities and associations listed in Art. 8 of the Italian IP Code, regulating the registration as trademark of portraits, names or signs corresponding to, or including, names, portraits and well-known signs owned by such persons, entities and associations; (5) the holder or the applicant for a PDO or a GI already granted in Italy or the EU or for which protection has been sought.

Language of the opposition proceedings: the opposition must be filed in Italian.

Urgent registrations: in principle not possible; however, applications filed concurrently with an application for international registration under the Madrid Agreement are treated preferentially; if an action in court is pending, requests for early issuance are accepted.

Appeal: in case of rejection, an appeal may be filed before the Board of Appeal of the Patent and Trademark Office within sixty days from the receipt of the contested decision.

Delivery of document: approximately six to eight months after the filing date. The trademark registration certificate is issued in electronic format only.

Beginning of protection: from the filing date of the application.

Duration of protection: ten years.

Renewal: for further periods of ten years; should be applied for within the last year of the term of protection.

Term of grace for renewal: six months (with fine).

Marking of registered goods: not compulsory.

Recommended marking: “Marchio registrato”, or “Marchio reg.” or “â”.

Compulsory character of registration: not compulsory.

Prior user rights: general prior public use invalidates subsequent registration by another party; territorially restricted prior use entitles the prior user to continue the same use within the same territorial limits.

Use requirements: use has to be genuine and not deceptive and/or liable to mislead the public as to the nature, quality and the origin of the goods, or services.

Secondary meaning: marks constituted by generic names of goods, or services, or by descriptive information referring to the same, may be validly registered, provided that, at the time the application is filed, they have acquired a distinctive character in consequence of their use.

Lapse through non-use: the registration can be questioned before the Patent and Trademark Office or in court, if after registration, use has not commenced, or has been suspended for five years or more. However, lapse of the registration cannot be claimed, if commencement, or resumption, of use is effected between the expiry of the five-year period of non-use and the lodgement of a claim for nullification, provided that such resumption of use has been made three months prior to the lodgement of a claim for lapse. Lapse for non-use cannot be claimed in relation to so-called “defensive marks” (i.e. similar marks belonging to the same owner who is using one of them for the same goods or services). If the grounds for lapse or nullification of a trademark exist only with respect to some of the goods, or services, the lapse, or nullification affects only these goods.

Validation of trademarks: the owner of an earlier registered mark, or of a right arising from prior use, who has acquiesced for a period of five years, while being aware thereof, to the use of a later similar or identical registered mark, is no longer entitled to oppose the use of this mark, or to request its nullification, unless the registration of the later mark was applied for in bad faith.

Modification of the mark: not possible.

Changes in the statement of goods: restrictions only are permissible.

Assignments and licenses: the deed of assignment must be executed by the assignor and the assignee, and attested by a Notary Public. Fiscal registration required for the deed of assignment, prior to recordal at the Patent and Trademark Office. The trademark can be validly assigned even in the absence of the business, or of a branch thereof, provided that the assignment of the mark alone does not give raise to any deception to the public; the mark can also be assigned only in relation to a part of the goods, or services for which the mark was registered.

License agreements: the same rules concerning the assignment apply also to licenses for the exclusive, or non-exclusive use of the mark; in the latter case, the goods marketed by the registered owner and by various licensees must be of the same quality.

Recordal of license agreements: not compulsory; formal requirements are the same as for assignment. The recordal of a license should indicate whether the license is exclusive or not.

Famous trademarks: if a trademark enjoys reputation in Italy, the protection may be extended to identify goods or services even not used by the trademark owner. According to Art. 12 of the Industrial Property Code, is considered well-known, a mark which, according to Art. 6bis of the Paris Convention, has acquired notoriety among the public through the promotion of the mark.

Infringement: must be prosecuted by an infringement action brought before one of a limited number of specialized courts.

Penalties for infringement: refund of damages possible, as a rule, following additional action; publication of the decision in the newspaper, adjudication of the goods bearing the infringing mark. Infringement is also a criminal offense and may be prosecuted by a criminal action.

Opposition to registered marks: not possible.

Compulsory licenses: not provided for.

Expropriation: possible under the provision of Article 194 of the Industrial Property Code.

Invalidation or revocation: as of December 29, 2022, it is possible to request the invalidation, both on absolute and relative grounds, or revocation of a trademark before the Italian Patent and Trademark Office through an administrative procedure. Previously, this was only possible before one of a limited number of specialized courts.

Upon receipt by the Italian Trademark Office of the request for conversion of an EUTM, the Trademark Office examines whether the request complies with the formal requirements and transmits the relevant documents to the designated offices. The EUIPO then informs the EUTM applicant/proprietor or his/her representative of the date of that transmission, enclosing a copy of the request for conversion and the documents which have been transmitted to the national Offices.

Time limit: the Italian PTO (Ufficio Italiano Brevetti e Marchi) informs the applicant/proprietor or his/her representative of the receipt of the application and gives a ninety-day term to file the documents required.

Note: the request for conversion becomes a national trademark application under the national law of the designated Offices, keeping the original filing date and, if any, its priority/seniority date.

Filing requirements:
1. Copy of the receipt attesting the payment of the conversion fee;
2. Copy of the request for conversion filed before the EUIPO;
3. Copy of the EUTM application;
4. Priority documents, if any;
5. Translation of the above documents in Italian and declaration of compliance of the original documents to the provided translation;
6. Power of attorney (where a representative has to be appointed), or address for service in Italy;
7. 1 or more reproductions of the mark;
8. Filling in and signing of a form usually attached to the notification of the receipt of the application.