THE TRADEMARK IN ITALY

A sign that can be represented graphically, such as: words, drawings, letters, figures, sounds, form of the product or its packaging, the combinations or shades of color, which is used by a body or a Company to distinguish itself and/or its products, and/or services which it produces, and/or markets.

Rights of a trademark

The trademark is the sign which distinguishes the Company or body, or its product, or its services from the Company or body or products and/or services of the competition. The trademark therefore has a distinctive and communicative function, it shows the provenance of products and services, it guarantees uniformity in quality.

The registration of a trademark confers on the holder in the State concerned the absolute right to use the trademark to distinguish the products or services manufactured or offered for sale or supplied for which the sign has been registered.

The owner of a registered trademark can therefore forbid third parties to use trademarks which are identical to his own for products or services which are identical to those for which the trademark is registered. He can also forbid the use of trademarks which are identical or similar to his own registered trademark for products or services which are identical or similar.
The owner of a registered trademark can also forbid third parties to use trademarks identical or similar to his own if his trademark is renowned in the country concerned. In the same way, he can forbid third parties to use the trademark if this allows them to take unfair advantage of the distinctive character or renown of the trademark.

The owner of a registered trademark cannot forbid third parties to use, in the course of their business activities:

1. their name and address;
2. indications relating to the type, quality, quantity, destination, value, geographic origin, period of manufacture of the product or of the rendering of the service or other characteristics of the product or the service;
3. the trademark if it is necessary to indicate the use of a product or a service, particularly as accessories or spare parts, provided that the use conforms to the principles of professional behavior, and therefore not as a trademark but as a description.

The owner of a registered trademark cannot forbid the use of the trademark for products on sale in the European Union with that trademark by the owner himself or with his agreement (parallel imports).

The trademark must be requested for products or services included in classes defined inside a specific international classification.
It is important, when choosing the products or services for which one is asking to protect the trademark, to include those which are similar and those which find an outlet in the same commercial lines, as a safeguard.
For registration, the same rules apply as those which apply to inventions.

Ownership of the trademark

Anyone who uses or proposes to use a trademark, in the manufacturing or commerce of products or in the rendering of services of his own company or companies which he controls, or which use the trademark with his agreement, can obtain the registration of a trademark.
Anyone may request the registration of a trademark, either an individual person or a juridical entity. It is important that the applicant intends to use the trademark within the term allowed by the law (5 years from the date of registration). Non-use will cause the trademark to be invalidated. The lapse must be proved by the interested third party.

Types of trademarks

Trademarks are divided into the following types:

1. product: when they are adopted by a company to distinguish its own products; it should be remembered that a product trademark can never be suppressed by the trader, when the producer has applied it;
2. merchandise: when they are adopted by the commercial body to distinguish the goods sold through their own commercial channels, whether they be a shop or a warehouse;
3. service: when they are intended to distinguish, for example, the activities of Companies operating in the following fields: transport and communication, advertising, construction, insurance and credit, shows, radio and television, treatment of materials and similar.
   A trademark can only distinguish the services which a company renders to third parties.

There are also collective trademarks which are granted to those whose purpose it is to guarantee the origin, nature or quality of certain products or services.
These trademarks do not belong to those who use them, but to that body, organized as a Company, which applied for them and which concedes the use of them to whomsoever possesses the necessary pre-requisites and respects the conditions of use, which must be established and filed together with the trademark.
This type of trademark, identified here and specified hereafter, must not be confused with some types of trademark which derive from specific European or Italian laws introduced to protect agricultural and food products.

1. DPO – Denomination of Protected Origin
   This identifies products which are transformed, processed and prepared in a determinate geographical area.
   Examples include San Daniele ham, Sardinian “pecorino” cheese and some olive oils.
2. IGP – Indication of Geographical Protection
   This includes products of which at least one of the stages of production, transformation or processing takes place in a determinate geographical area.
   Examples include: Pachino tomatoes and Colonnata pork fat.
3. TSG – Traditional Speciality Guaranteed
   This identifies products without a specific origin but characterized by a traditional composition of the product or a traditional method of production.
   Typical example: mozzarella.

In Italy, before the above EEC Regulation, norms were already in force to protect specific agricultural and food products. Since the Regulation, the national certification system is used exclusively for wines. In particular:

1. DOCG – Denominazione di Origine Controllata e Garantita (Denomination of Controlled and Guaranteed Origin).
   This is given to all wines which, apart from being quality wines, must be bottled in the area where they are produced and in containers with a capacity of less than five liters.

                          
2. DOC – Denominazione di Origine Controllata (Denomination of Controlled Origin).
   This indicates quality wines originating from limited areas which are referred to in the name of the wine. Wines with this denomination must also respect specific oeno-chemical and organoleptic characteristics, laid down by production Regulations.
3. IGT – Indicazione Geografica Tipica (Typical Geographical Indication).
   This indicates table wines from extensive geographical areas, with less restrictive oeno-chemical and organoleptic characteristics than those laid down for DOC wines.

Classification of trademarks

It is possible to register as a trademark all those signs which can be represented graphically and which, at the moment of filing, are not in general use or already known as distinctive trademarks of products or services of the same kind or a similar kind made, put on sale or supplied by third parties.

• Denominative trademarks
  Denominative trademarks are those made up of imagined words, patronymics, geographical names, social titles, acronyms, letters of the alphabet, numbers, etc.
• Figurative trademarks
  Figurative trademarks are those made up of emblems and colors and include more elaborate representations, such as cartoons, labels, portraits, etc.
• Complex trademarks
  Complex trademarks are those made up of figurative and denominative elements.
• Sound trademark
  These are for example the signature tunes of radio and television programmers. They are registered by filing the relative pentagram.
• Three-dimensional trademarks
  Three-dimensional trademarks are the shape of the products and their packaging. It should be remembered that a trademark for the shape of a product cannot be granted indiscriminately, but only if the shape is unusual, arbitrary or imaginative. The shape must not have any aesthetic or functional purpose, or any particular use, otherwise the protection is obtained by a patent of industrial invention and utility model, or by registering models.
• Trademark of odour
  Trademarks of odour can only be properly protected if they can be reproduced graphically, for example by a chemical or galena formula, or descriptively or by systems of analysis.

Requirements for registration

In order to be eligible for registration, the trademark must possess a distinctive abstract feature which is expressed by the overall impression which it gives to the consumer of average diligence and intelligence.

The trademark must be new, that is, it must not be anticipated by other identical or similar trademarks already valid in Italy.
Novelty is evaluated with reference to the classes of products and services shown in the specific international classification; it is also evaluated according to the likeness of the products and the services and the type of customer for which they are intended.
Before filing a trademark, it is always best to carry out a prior search to determine its novelty. However, a prior search can never give an absolute guarantee because sources are never completely updated, and because there may be a “de facto” trademark. Prior searches made via the Internet are not effective, in most cases.

1. of general denominations of products or services,
2. of descriptive indications which refer to the products or services.

The following cannot be the subject of a registered trademark: words, figures or signs contrary to law, public order or morals.
This rule also concerns obscene drawings or words which are offensive to public decency, or intended to discredit national institutions, religious sentiment, and the symbols of the nation.
The following cannot be the subject of a registered trademark either: coats-of arms, flags, official emblems and other signs considered in International Conventions in force, the coats-of-arms and heraldic emblems of public interest, unless the competent Authority has authorized the registration.

Names of people, signs used in the artistic, literary, scientific, political or sporting field; denominations and acronyms of performances, names of associations and public authorities, if well-known, can be registered as a trademark only by those who have the right to do so, or otherwise by third parties who have the agreement of the former.

Moreover, it is not possible to register as a trademark signs which would infringe the copyright, industrial property right or any other exclusive right of a third person.

Strong trademarks and weak trademarks

Trademarks can be classified as weak or strong.
It is possible to use as a trademark a word which is a modification, even a slight modification, of the general word for the product (an extreme case is the use of the word “automobilio” to distinguish a car (automobile)). Such a trademark has a very limited protection, and for this reason is usually called a weak trademark, because it is only protected insofar as it differs from the general denomination of the product.

Strong trademarks are those which have a particular power to individualize the product, that is, where the words, figures and other signs which constitute the trademark do not present, at least immediately, any conceptual connection or link with the product which they distinguish.
A patronymic trademark (that is, consisting of the name of a person) is a strong trademark, as there is no conceptual connection with the product.

Secondary meaning

Secondary meaning occurs when a descriptive or expressive expression or in any case an expression of common use, and therefore that cannot be protected as a trademark, keeps its own original meaning but, with the passing of time, takes on another, secondary meaning, which is able to distinguish the source of products from a certain company. This mainly happens when the company makes constant and substantive use of this expression and a consequent association is created in the mind of the consumer.

De facto trademarks

It is possible for a company to acquire the exclusive right to use the trademark simply by using the trademark, whether the trademark is registered or not (so-called unregistered trademark or de facto trademark).
An unregistered trademark enjoys a lesser juridical protection.
Only if, by being used, the trademark has attained a sufficiently widespread fame throughout the national territory, can the holder, through continuity of use, prevent third parties from registering a corresponding trademark, just as a preceding, registered trademark which was still valid would prevent such a trademark being registered.
If however the trademark has been pre-used by the holder of the application for the trademark, this does not prevent the trademark from being registered. There are countries which do not recognize pre-use, nor de facto trademarks.
If however the unregistered trademark only enjoys a local fame, others will be able to register a corresponding trademark, while those who have used the unregistered trademark will be able to continue to use it, notwithstanding the registration obtained by others, within the limits allowed by pre-use, that is, within the limits of local use.

Lapse of the trademark

If the registered trademark is not used, by the holder or authorized person, for five consecutive years from the registration date, except in particular cases, the trademark lapses.
The interested third party is responsible for demonstrating that it has lapsed.
However, the lapse cannot be validated if use is started or restarted before the request for cancellation is made by the interested third parties.

The right to the trademark remains the property of the firm even when the latter is bankrupt or goes into liquidation, as these cases do not signify the definitive cessation of activity on the part of the firm.

The right to the trademark lapses because of non-use when the production and/or sale exercised under that trademark definitively ceases, and that happens when the company is closed down, which means that the holder of the trademark itself no longer exists, if the trademark has not been previously and legally assigned.

The trademark lapses due to vulgarization when the trademark has lost its distinctive force because the word has been acquired into the everyday language of consumers and producers (for example, PREMAMAN for clothes for expectant mothers, or CELLOPHANE).

A trademark also lapses because of deception, if it is used in a deceptive way, against the law or against public order or public morals.

A collective trademark lapses if the relative regulations are not applied.

Transfers or licenses

The trademark can be legally transferred without the company or without a branch thereof, provided that no deception is caused to the consumer by this transfer.
The same trademark can be transferred to several different holders on condition that it does not create confusion in the consumer’s mind.
The trademark can also be licensed for use within the conventional limits agreed between the contracting parties.

Validation of the trademark

The holder of a registered or used trademark which is not simply known locally, who tolerates for five years the use of a previously registered trademark which is the same as or similar to his own, can neither request the cancellation of the previous trademark nor prevent its use for products or services in relation to which the second trademark has been used.

Protection

The trademark can be protected both administratively and judicially. It is protected administratively by means of a specific procedure of opposition to the definitive grant (at the moment of writing this is not yet operative in Italy). It is protected judicially both by civil and by penal law. The judicial action to protect the right of the trademark can be to ascertain, to inhibit, to claim damages, and also to vindicate a claim when the ownership of the trademark is contested. Substantially the same regulations are applied as those relating to patents.

Filing the trademark abroad

For the extension of a trademark abroad, priority expires 6 months after it has been filed in Italy. To extend a trademark abroad under the priority system means that the date of validity of the trademark filed abroad starts from the filing date of the Italian trademark. Unlike a patent of industrial invention, utility model and design and model, a trademark can be extended abroad even after the 6 months and even if it is already disclosed.