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How do you get a trademark registration in Italy?
If you intend to realize trademark registration in Italy, you can achieve this in three different ways: through a national Italian trademark registration, through a trademark registration for the European Union or through an international trademark registration with several countries to be chosen, according to the Madrid Protocol. You will then have to deal with the UIBM, the EUIPO or the WIPO respectively. Trademark registration is not mandatory in Italy to obtain trademark rights. However, this is always recommended as it strengthens the trademark and ownership status. If your trademark is not used within five years of registration, it can be canceled.
Trademark registration in Italy: word mark, figurative mark or a combination thereof?
Trademark registration in Italy can take place at different levels. This means that you can register your brand at word level (brand name) as well as image level (logo) or combined level (brand name and logo). If you prefer a combined trademark, the rights you acquire with your registration only concern this exact composition. If you want to be able to distinguish both elements separately from each other, then these are two separate procedures.
Did you not do the latter and only register a combined trademark? Still, that does not immediately mean that you are drawing the short straw. If you can demonstrate that another party uses the same brand name or logo as you and offers equivalent goods and services, you may object. In official denominations you then go into opposition. The success of your opposition attempt depends on the exact circumstances.
Trademark registration in Italy through the UIBM
If you opt for a national Italian trademark registration, you must submit an application to the UIBM. This type of trademark registration cannot be extended to other countries. Another plus is that you can submit it immediately, without having to register in your own country. You can apply for a trademark registration for Italy in several ways at the UIBM, the Italian national trademark agency. You can complete your application online, submit a completed form to the Italian Chamber of Commerce or send it to the Ministry of Economic Development.
Trademark registration in Italy also applies to San Marino
A trademark registered in Italy also provides you with trademark protection in San Marino, the small autonomous republic surrounded entirely by Italy. It should be noted, however, that this is only the case if you have the trademark registration carried out in Italy by the UIBM and not via the EUIPO or WIPO.
How does the application to the UIBM work?
You need various documents to apply for trademark registration in Italy via the UIBM. For example, you must provide the agency with a detailed description of the brand, a list of goods and / or services classified according to the Nice Classification, as well as personal details of you as the applicant, a valid correspondence address and a copy of the trademark.
Always take into account the latest payment date associated with the procedure. If the payment is made later than intended, you can run up a considerable time delay. You may submit documents that have not been submitted or have not been submitted in full up to two months after the date of application. If you are unable to meet a deadline, you can still proceed with the trademark registration procedure in Italy by making an additional payment.
After the application
When your application for trademark registration in Italy has been assessed and accepted by the UIBM, it will be published for opposition. This means that a third party may object to your application during this three-month period. If this does not happen, trademark registration in Italy is a fact. Registered trademarks are valid in Italy for ten years from the date of application. You can extend the registration indefinitely, each time for a period of ten years. For this you always have to go through the registration procedure. An extension can be requested from twelve months before the end date of the registration.
Apply for trademark registration in Italy via other routes
A large part of the entrepreneurs opt for trademark registration in Italy through the UIBM. However, if you prefer trademark registration throughout the European Union, including Italy, then you should submit your application to the EUIPO. This currently includes 27 countries since the departure of Great Britain. Trademark registration within the European Union provides you with trademark protection, just like registration at a national level. Another reason to submit an application at this level is the fact that trademark registration is quite advantageous compared to a national registration.
If you opt for an international trademark registration via WIPO, you must first have a basic registration in the Benelux or a European trademark registration. The Geneva-based WIPO assesses the applications on the basis of the Madrid Protocol, which covers most European countries, but also Japan, China, Russia, Australia and the United States. However, this agency does not investigate whether your trademark is also eligible for protection.