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Racheli offers its foreign clients full services relating to searching, filing and prosecuting Italian and Community trademark applications, as well as filing Italian and Community oppositions, cancellation proceedings, defending from such kind of actions filed by third party and providing  trademark watching services.

Italian Trademarks

 

 

The trademark usually consists of a logo or a word, or both, with which the goods and/or services are distinguished. In particular, it may consist of words, proper nouns, drawings, letters, numbers, sounds,  the shape of the product or of its packaging, chromatic shades combinations or chromatic shades as long as it results suitable to distinguish the goods or services of an undertaking  from the ones  of  other undertakings.

 

The goods and services which may be claimed in the application are those listed in the 10th Edition of the Nice International  Classification.

 

PROSECUTION

The application for an Italian trademark (or the Italian part of an International trademark)  is subject to a formal examination and to an examination on absolute grounds of validity, but not on relative grounds of validity.  As for the latter they may be raised in third party proceedings, in certain cases in the context of oppositions before the Italian Patent and Trademark Office (UIBM).  Otherwise, grounds of invalidity may only be raised by means of a court cancellation action.

 

In the absence of any objections, the UIBM normally issues registrations within 6 months from the filing date.

 

Italian Trademarks - Absolute Requirements

ABSOLUTE REGISTRABILITY REQUIREMENTS

 

The Italian PTO conducts an examination of applications for compliance with absolute requirements: the applied mark must be endowed with distinctive character, i.e. it must have visual, sound and conceptual characteristics which would enable the consumer to distinguish the origin of the goods and/or services for which it will be used from goods and/or services of other undertakings ;

 

It must not be:

 

• constituted exclusively of generic or descriptive words in relation to the goods or services for which the trademark is intended to be used, and which may describe the nature, quality, quantity, the destination, the value, geographical origin, date of creation or any other characteristic of the goods or services;

• likely to mislead the public, especially with regards to the geographical origin, nature or quality of the goods and/or services;

• a shape which is solely dictated by the nature of the good, necessary to achieve a technical result, or which gives substantial added value to the good;

• a symbol or emblem of public interest, unless the applicant has the consent of the competent public authority, or a symbol or emblem protected by international conventions, such as the Olympic symbol;

• obtained without the consent of third parties deemed to be entitled to their use: portraits of persons; well-known marks/signs used in the fields of art, literature, science, politics and sports; well-known personal names, acronyms and symbols used by public events, associations and not-for-profit organizations.

• contrary to public policy or accepted principles of morality;

• filed by an applicant in bad faith.

 

However, a mark which is otherwise not inherently distinctive, or which is commonly used in everyday language or regularly used in commerce with regards to the goods or services, can be registered if it is possible to claim pre-application acquired distinctive character through use in Italy.

 

This exception does not apply to three-dimensional marks whose shape is dictated by the product's function.

 

 

 

However, a mark which is otherwise not inherently distinctive, or which is commonly used in everyday language or regularly used in commerce with regards to the goods or services, can be registered if it is possible to claim pre-application acquired distinctive character through use in Italy.

 

This exception does not apply to three-dimensional marks whose shape is dictated by the product's function.

 

Italian Trademarks - Relative Requirements

In order to constitute a valid trademark, the distinctive sign must be new, i.e:

 

• it cannot be identical or similar to a prior registered trademark, or to a prior unregistered trademark (including distinctive signs with more than mere local significance used in Italy, such as a trade or service mark, business name, shop sign and/or domain name used in the course of trade) that is protected for identical or similar goods or services, so as to create a risk of confusion with this prior trademark;

• it cannot be identical or similar to a prior well-known trademark, whether registered or unregistered, or with a prior well-known business name or sign, or a company domain name, so as to cause a risk of confusion, including a risk of association with, or cause prejudice or take unfair advantage of the reputation of the well-known prior registered trademark;

• a trademark filed in contravention of Art. 6bis of the Paris Convention (hence conflicting with foreign registered mark but well-known through its promotion in Italy);

• it must not infringe other third party intellectual property rights, e.g. design rights, copyrighted works.



Italian Trademarks - Oppositions

Since the Italian PTO does not carry out novelty examinations of  applications, this could give rise to conflicts with prior registered or pending trademarks.  In certain cases, it is possible for third parties to oppose the registration in Italy of Italian national trademark applications or International trademarks designating Italy.



Time limits to oppose:

 

Any opposition must be filed within the un-extendible deadline of three-months running respectively from:

 

• the publication date of any national application in the Italian Trademarks Bulletin;

• the first day of the month subsequent to the month of publication on the WIPO (World International Property Organization) Gazette of any International trademarks validly extended to Italy.

Grounds of opposition:

 

The grounds for opposition are those laid down in Articles 8 and 12 sub-paragraphs (1)(c) and (1)(d) of the Italian Code of Industrial Property.

 

Therefore, an opposition can be directed against:

 

• trademark applications consisting of containing personal portraits and filed without the needed consent, names of persons, different from the applicant's one, which are deemed to damage the reputation, credit and dignity of whom has the right to those names and well-known personal names and signs used in the field of art, literature, science, politics and sports, including names of entities or associations without economical aims,  and their respective emblems, without consent of such persons or entities, or

• applications for trademarks consisting of signs which are identical with / similar to prior registered trademarks valid in Italy claiming identical or similar goods/services.

Other grounds of invalidity may only be raised against the trademark registration by means of a court cancellation action.

 

As far as the opposition procedure is concerned, it is quite similar to the one adopted by the Community Trade Mark Regulation in the case of Community trademarks.

Italian Trademarks - Duration & Use Requirement

DURATION

 

The duration of Italian registrations is ten years from the filing date, and these registrations are renewable for successive periods of ten years, without limitation.

USE REQUIREMENT

 

An Italian trademark must be used as registered, or with such minor modifications that do not alter the distinctive character of the registered mark, by its owner or licensee within 5 years from its date of registration. A cancellation action can be brought by a third party against the registered trademark on the grounds of continuous non-use (or non-conforming use)  for the period of 5 years preceding the date of filing of the cancellation action, if more than 5 years have passed since the date of registration.

Community Trademarks

Introduced in 1996, the European Community trademark (usually referred to as the "Community trademark") is a single trademark registration which is valid in the entire territory of the European Union (28 Member States up to 2013):

Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, United Kingdom.

 

The Community trademark can be obtained by means of:

 

• a single application before the Office for the Harmonisation in the Internal Market (the "OHIM"), in Alicante, Spain; or

• designating the Community trademark (EM) for protection with an International Trademark filed with the World Intellectual Property Organization, in Geneva, Switzerland, though the applicant’s national office in the country of origin.

A Community trademark application can be filed by any individual or legal entity having its domicile or principal place of business anywhere in the world. However, it is highly recommended to use the services of a European trademark attorney accredited to practice before the OHIM, since applications are often subjected to substantive examinations and third party oppositions, which may critically affect the success of the application.

 

The information and documents required for filing CTM trademark applications are:

 

• the complete name and address (legal seat) of the applicant;

• a General Authorization signed by a legal representative of the Applicant - no legalization is required;

• in case the mark contains a logo, device or special word script, a clear sample of the mark to be filed, to be forwarded by e-mail in .jpg or .pdf layout. If colours are to be claimed, it has to be specified.

 

Community Trademarks

VALIDITY REQUIREMENTS

These requirements are substantially similar to the ones applicable to the Italian trademark (see above) although the relevant languages to be taken into consideration are the official languages of every  Member State of the European Union. The requirements are contained in Art. 4 – 8 of the Community Trademark Regulation, Council Regulation (EC) No 207/2009 of 26 February 2009 (CTMR).

 

PROSECUTION

The application for a Community trademark is subject to a formal examination and to an examination on absolute grounds of validity, but not relative grounds of validity.  As for the latter they may be raised by third party, in the context of oppositions and cancellation actions before the OHIM, or of a cancellation counterclaim before a Community Trademark Court.

 

In the absence of any objections, the OHIM normally issues registrations within 12 months from the filing date.

DURATION

 

The duration of Community trademark registrations is ten years from the filing date, and these registrations are renewable for successive periods of ten years, without limitation.

 

USE REQUIREMENT

 

A Community trademark must be used within the Community by its owner or licensee within 5 years from its date of registration. A cancellation action can be brought by a third party against the trademark registration on the grounds of continuous non-use for the period of 5 years preceding the date of filing of the cancellation action, if more than 5 years have passed since the date of registration.

Art. 15 par. 1 CTMR also provides that the following may constitute use by the owner:

(a) use of the Community trademark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;

(b) affixing of the Community trademark to goods or to the packaging thereof in the Community solely for export purposes.

 

International Trademarks

 

 

It is also possible for corporations or individuals who have their principal place of business or domicile in a country which has ratified the Madrid Agreement and/or the Protocol of Accession to the Madrid Agreement (the "Madrid Protocol"), and which has enacted special legislation implementing these treaties, to obtain International trademark protection by means of a trademark filing designating several countries simultaneously, including Italy, all of which are parties to these treaties.

Currently there are 92 Contracting Parties of the Madrid System (Agreement and/or Protocol) including Italy and the European Union.

 

PROSECUTION

The application must be made by the applicant at the official Trademark Office of the Contracting State in which it has filed its original trademark application, designating the countries in which the application is to be extended and paying the corresponding official fees.

The Trademark Office of the country of origin then transmits the International trademark application to the offices of the World Intellectual Property Organization, in Geneva, Switzerland ("WIPO"), which processes and publishes the application in the WIPO Bulletin "Les Marques Internationales" and then transmits it to the Trademark Offices of the respective countries which have been designated.

The latter then examine the application under their own national trademark systems and must return a decision either to refuse or allow the registration (within 12 months if the country is just a party to the Agreements (nowadays just Algeria), within 18 months if the country is a party to the Protocol, from the date of publication in the WIPO Bulletin).  This refusal may be appealed before the National Trademark Office which has issued the refusal.

 

 

 

Therefore, the application for an Italian part of an International trademark will be examined by the UIBM on absolute grounds of validity, but not relative grounds of validity.  As for the latter they may be raised in third party proceedings, in certain cases in the context of oppositions before the Italian Patent and Trademark Office (UIBM).  Otherwise, grounds of invalidity may only be raised by means of a court cancellation action in Italy.

 

In the absence of any objections, the UIBM will issue a grant of protection statement with 18 months from the international publication date.

 

The Protocol also provides that English constitutes the second official language of the Madrid System of International trademarks.

 

to know more...

 

RACHELI S.r.l. CONSULENTI IN PROPRIETA' INTELLETTUALE - CONSULTANTS IN INTELLECTUAL PROPERTY - Tel. +39.02.480681 - Fax. +39.02.48008343 +39.02.48002648 - E-mail: racheli@racheli.it - Cod. Fisc. P.IVA - VAT REG. N. 09899330154

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A. COPYRIGHT AND DISCLAIMER
This web site is presented by firm Racheli S.r.l., Consultants in Intellectual Property (hereinafter also referred to as “Racheli”). The contents thereof, in whole and in part, are protected by copyright and may not be reproduced for commercial purposes. Partial reproductions of site contents are permitted on condition that the source is identified and the reproduction is not of a commercial nature.
They are strictly informative, do not claim completeness and do not constitute legal or professional advice. No action with respect to any information contained on this website should be taken without consultation with a professional appropriate to the individual case. Any liability in connection with this website and the information provided therein, including the content of possible links, is therefore excluded to the extent permitted by law.
Racheli is an Italian company, duly registered with the Milan Business Registry under no. 300489 /1996 and having the V.A.T.  number IT 09899330154.
To the extent permitted by law, Italian law is applicable for all matters concerning this website or services rendered by Racheli or its attorneys who handle(s) the individual case.
The European Patent Attorneys of Racheli are registered with the European Patent Office and are members of the Institute of Professional Representatives before the EPO (EPI).
The Italian Patent, Design and Trademark Attorneys are registered with the Italian Patent and Trademark Office and are members of the Ordine dei Consulenti in Proprietà Industriale, the Italian Patent, Designs and Trademark Attorneys' association.
The European Trademark and Design Attorneys are registered at the Office for Harmonization in the Internal Market. They are subject to the rules of the Council Regulation on the Community Trade Mark and of the Council Regulation on the Community Design. 
The Attorneys at Law acting on behalf of Racheli as consultants are Italian and Canadian lawyers and are members of their respective bar associations.

The following professional codes of conduct apply to:
the European Patent Attorneys:
- Guidelines for practising the profession, issued by the Institute of Professional Representatives before the European Patent Office (EPI)
- Guidelines concerning disciplinary matters, issued by the Administrative Council of the European Patent Office

the Italian Patent, Design and Trademark Attorneys:
- Code of Professional Conduct of the Ordine dei Consulenti in Proprietà Industriale


the Attorneys at Law:
- Codes of Professional Conduct of the Milan and Spanish Bar Associations
- Code of Professional Conduct of the Law Society of Upper Canada
- The Code of Conduct for Lawyers in the European Community issued by the CCBE (Council of the Bars and Law Societies of the European Community) is applicable to all lawyers acting in the EU http://www.cobe.org/UK/publications.htm.


B. TRADEMARKS
“Racheli” and the accompanying logo are trademarks owned by Racheli S.r.l. and are protected among others by trademark applications and registrations. No use of these trademarks can be made without the express authorization of Racheli, which reserves its rights to any legal remedies against unauthorized use of its trademarks.


C. PRIVACY STATEMENT
This page contains the terms by which our web site is managed with regards to the treatment of personal data of the users who consult it.
This information statement is made in accordance with the Italian legal requirements provided in Art. 13 Law Decree. no. 196/2003 – Code on the Protection of Personal Data  - to all those users who interface with the information services rendered by Racheli, accessible by Internet at the URL: http://www.racheli.it
This information statement is made exclusively for this web site and not for other web sites which may be consulted by using a link contained herein.

THE HOLDER OF THE PROCESSED DATA
Pursuant to the use and consultation of this web site the holder may use and process data pertaining to identified or identifiable persons. The holder in the present case is Racheli S.r.l., having its registered place of business at Viale S. Michele del Carso 4, - 20144 Milan, Italy.

LOCATION OF THE PROCESSING
The processing of data collected from users of this web site is carried out solely by personnel of Racheli normally entrusted with this task by the Holder, or by persons from time to time requested to carry out maintenance of the web site. 
No data collected from users of this web site is communicated to third parties unless in the normal course of professional services rendered by the Holder.
The personal data obtained from users are used only for the purpose of responding to requests for information from users.

TYPE OF DATA PROCESSED
The information systems and software procedures put in place for the functioning of this web site acquire, in the course of their normal operation, certain personal data the transmission of which is implicit in the use of Internet communication protocols.

This data is not collected with the purpose of being associated to identified interests, but that could, by their own nature, by means of processing or association with data held by third parties, lead to identifying the users.
This category of data will usually include IP addresses or the domain names of computers employed by users who connect themselves to the web site, the URI (Uniform Resource Identifier) addresses for the requested resources, the time of the query, the method used in submitting the query to the server, the size of the file obtained in the reply, the numerical code identifying the status of the reply given by the server (ok, error, etc.) and other parameters relating to the operating system and the IT environment of the user.
The optional, explicit and voluntary sending of e-mails to the addresses indicated on this website entails the subsequent acquisition of the address of the sender, which is necessary to reply to requests, as well as any other personal data contained in these messages.

COOKIES
No personal data of a user is acquired by the web site.
Cookies are not used to send information containing personal data.  The web site does use persistent cookies as a system to trace users.
The use of session cookies (that are not saved for a long time on the user’s computer and are deleted at the browser’s closure) is strictly limited to the transmission of session identifiers (constituted by casual numbers generated by the server) that are necessary to consent a safe and efficient necessary exploration of the web site.
The aforementioned session cookies used in this web site avoid the need to recur to other computer technology which may be detrimental to the confidentiality of the users’ navigation and do not consent the acquisition of personal identification data of the users.

MODES OF PROCESSING
The personal data is handled using automated tools for the time strictly necessary to carry out the purpose for which they have been obtained
Specific security measures are observed to avoid the loss of data, illegal on incorrect use or unauthorized access. 

RIGHTS OF INTERESTED PARTIES
Persons referred to by personal data have the right to exercise at any time the rights provided in Art. 7 Law Decree no. 196/2003 and, in particular, to obtain the confirmation of the existence or not of such data and to know its content and origin, to verify its exactness or requests their completion, correction or updating, or to request their cancellation, the transformation in anonymous form or blocking of data dealt with in violation of the law, as well as to oppose themselves in any case, for legitimate reasons, to their processing or handling.

All request must be made to Racheli S.r.l.., Viale S. Michele del Carso, 4 – 20144 Milano, Italy. ( Tel: (+39) 02 480681 - Fax: (+39) 02 48008343 - E-mail: racheli@racheli.it)