THE TRADEMARK IN ITALY

Abstract

1. In Italy, and in most countries, a trademark lasts 10 years; in all countries, including Italy, it can be renewed when it expires for an undefined number of times.
2. There are product trademarks, merchandise trademarks and service trademarks. There are also collective trademarks.
3. A trademark must not be a generic denomination, or a descriptive indication; it must be new and it must have precise contents.
4. A trademark which is not used for a certain number of years expires; the expiry must be demonstrated by any interested third party before any re-use begins.
5. Before filing for a trademark, it is advisable to carry out a prior search, which in practice is a feasibility study.           
   The prior search must be made on the trademark concerned and also on the products and/or services concerned.
6. In order to identify any patents belonging to third parties, it is possible to carry out searches in the name of the proprietor, by class of product/services, or by trademark. It is also possible to carry out continuous checks (alert searches).       
   Searches cannot give an absolute result inasmuch as they all have a certain degree of certainty and a certain degree of cover, because they do not include de facto trademarks, that is, those trademarks used on a national basis (and not filed) in States where they are recognized.
7. A trademark has to be protected for the products and/or services concerned; the Proprietor should also foresee any possible extension, at least in the medium term.
8. Extending a trademark abroad must be because of real strategic and commercial requirements.
9. A trademark has to be protected in those countries where one’s own commercial activity takes place and in those countries where one intends to start trading in the medium term; also in those countries where cases of “trademark piracy” regularly happen. Generally speaking, it is not advisable to start a commercial activity in a country without having first protected one’s trademark there.
10. A trademark can be extended even without claiming priority, as this does not cause any particular loss of rights, but simply defers the filing date.
11. Widespread and long-lasting use may give rise to a “de facto” trademark which in some cases can be compared to a registered trademark.      
    Not all countries recognize a “de facto” trademark.
12. The proprietor of a trademark must never authorize third parties to adopt said trademark in terms and forms that might harm the complete ownership of the trademark and/or its value.