Trademarks in Italy 2024

Trademarks in Italy 2024

TRADEMARKS 2024

ITALY

Pier Luigi Roncaglia, Carloalberto Giovannetti, Noemi Parrotta

(Spheriens)

LEGAL FRAMEWORK

Domestic law

1. What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation is the Italian Code of Industrial Property (Legislative Decree No. 30 of 10 February 2005, last amended by Law No. 102/2023).

International law

2. Which international trademark agreements has your jurisdiction signed?

Italy has signed the following international trademark agreements:

• the Paris Convention for the Protection of Industrial Property of 20 March 1883;
• the Madrid Agreement Concerning the International Registration of Marks of 14 April 1891;
• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957;
• the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks of 12 June 1973 (Italy has signed this agreement but never ratified it);
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of 27 June 1989;
• the Trade-Related Aspects of Intellectual Property Rights of 15 April 1994;
• the Trademark Law Treaty of 27 October 1994; and
• the Singapore Treaty on the Law of Trademarks of 27 March 2006.

Regulators

3. Which government bodies regulate trademark law?

Trademark law is subject to the standard law-making procedure, ordinarily undertaken by the two houses of Parliament: the Chamber of Deputies and the Senate. Under specific circumstances, the government may exercise legislative power by adopting decrees and implement a law by adopting decrees or regulations. The Italian patent and trademark office may be required to adopt implementing decrees and administrative circulars on a case-by-case basis.

REGISTRATION AND USE

Ownership of marks

4. Who may apply for registration?

An application can be filed by any person – natural or legal – that intends to use, or is already using, a mark. The application can be filed by the entity itself or through a representative, which needs to be appointed with a power of attorney (this can be filed at a later stage, up to two months from the filing date).

Scope of trademark

5. What may and may not be protected and registered as a trademark?

An Italian trademark may consist of any signs – including personal names, designs, letters, numerals, colors, the shape of goods or the packaging of goods, or sounds – provided that such signs are capable of distinguishing one entity’s goods or services from those of another undertaking, as well as of being represented on the register in a manner that enables the competent authorities and the public to determine the clear and precise scope of protection afforded to its proprietor. Therefore, it is possible to apply for registration of non-traditional marks.

People’s portraits are registrable subject to the consent of the relevant right holder. Personal names different from the name of the applicant may be registered provided that the relevant use is not capable of tarnishing the reputation, credit or dignity of those who are entitled to bear such names; in any case, the Italian patent and trademark office (PTO) has the power to make the relevant registration subject to the consent of the relevant right holder.

The Italian Industrial Property Code (IPC) also provides, under article 8, for an express reservation of the right to register and use as trademarks well-known signs – such as personal names, signs used in the artistic, literary, scientific, political or sports fields, etc – to those who have established their fame.

However, the following cannot be registered:

• signs lacking distinctive character;
• signs that are descriptive;
• customary signs or indications;
• signs consisting exclusively of shapes or other characteristics that:
• result from the nature of the relevant products;
• are necessary to obtain a technical result; or
• give substantial value to the relevant goods; and
• signs contrary to public policy or accepted principles of morality;
• deceptive signs;
• signs that are evocative, usurpative, imitative of geographical indications and protected designations of origin;
• signs whose use may amount to an infringement of third parties’ copyright, industrial property rights or any other exclusive rights;
• signs that are excluded from registration, pursuant to EU legislation or national law or to international agreements to which the European Union or Italy is party, providing for the protection of designations of origin and geographical indications;
• signs that are excluded from registration pursuant to EU legislation or international agreements to which the European Union is a party, providing for the protection of traditional terms for wine;
• signs that are excluded from registration pursuant to EU legislation or international agreements to which the European Union is a party, providing for the protection of traditional specialities guaranteed;
• signs that consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with EU legislation or national law, or international agreements to which the European Union or Italy is a party, providing for the protection of plant variety rights, and that are in respect of plant varieties of the same or closely related species;
• signs that reproduce coats of arms and other signs recognized in international conventions or symbols, emblems and coats of arms that are of public interest (including signs associated with law enforcement authorities, armed forces, names of states and territorial public entities) unless the competent authority has authorized its registration; and
• signs that contain words, figures or signs harmful to the image or repute of Italy.

Italian law also provides specific provisions on both collective marks and certification marks.

Unregistered trademarks

6. Can trademark rights be established without registration?

Under Italian law, unregistered trademarks are protected as long as they enjoy a sufficient level of consumer recognition with regard to the goods and services concerned (the ‘qualified knowledge’) meaning that the relevant public has come to see the relevant sign as identifying the concerned goods or services on the market, thanks to its widespread and intense use in Italy.

Famous foreign trademarks

7. Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

The IPC affords to unregistered well-known marks within the meaning of article 6bis of the Paris Convention (namely, marks that are well-known in Italy thanks to their use and promotion abroad) the power to bar or cancel the registration of identical or similar marks for even dissimilar goods or services, while it does not contain any provision that expressly affords protection to said marks against the unauthorized use of conflicting signs by third parties as provided by articles 16(2) and 16(3) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement).

This is because, when dealing with the issue of protection, the IPC applies only to registered marks. In practical terms, to prevent the unauthorized use of the conflicting mark, the owner of a well-known mark within the meaning of article 6bis of the Paris Convention will have only the very light burden of filing an application in Italy before taking action.

In any event, it should be remembered that article 6bis of the Paris Convention and, consequently, articles 16(2) and 16(3) of the TRIPS Agreement, are automatically applicable in countries that are signatories to these agreements absent a specific, more favorable national provision.

The benefits of registration

8. What are the benefits of registration?

There are significant advantages to filing a mark. Unlike unregistered trademarks, registered trademarks:

• enjoy a presumption of validity;
• can be used as a basis in opposition proceedings;
• can be used as a basis in administrative cancellation actions before the Italian PTO;
• enjoy broader protection in criminal proceedings;
• are valid in the Republic of San Marino and may be valid in the Vatican City state; and
• are valid titles for filing an application for action before the customs authorities.

In addition, for unregistered trademarks, enforcement is more complicated, and consequently more expensive.

Filing procedure and documentation

9. What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

To file a trademark application, the following documents are needed:

• a representation of the sign; and
• a power of attorney, which can be filed at a later stage (namely, two months from the filing date) if the application is filed by a trademark agent or a lawyer.

Yes, electronic filing is available.

Before filing a trademark, carrying out an availability search is advisable as the PTO does not provide search reports.

Registration time frame and cost

10. How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

Although the PTO’s time frame is often unpredictable, once a trademark is filed, it usually takes about eight to 10 months to obtain a registration. However, a mark enjoys protection from the day after its filing date.

Official fees for filing a regular trademark application in Italy are approximately €200 for one class (comprising fees to file the special or general power of attorney), while any additional class entails a fee of €34. There are no fees to claim priority or to receive the certificate of registration.

On 26 February 2019, the PTO implemented a fast-track system aimed at speeding up the examination of applications for the benefit of both the applicant and the PTO. A fast-track application can claim goods and services from the alphabetical list of the Nice Classification only, so examiners do not need to check these terms, making the examination procedure quicker and easier.

To use this fast-track system, it is necessary to file the relevant application and pay the official fees through the new online platform. The fast-track system is available for word and figurative marks only (non-traditional marks, collective and certification marks are excluded), and priority claims are not admitted.

Classification system

11. What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Italy follows the Nice Classification of goods and services. A list of goods or services shall be included in the trademark application. Multi-class applications are available and are cost-effective, considering that official fees for the first class are in the range of €150 to €200 (depending on the presence of a power of attorney or not) and the fee for each additional class is €34.

Examination procedure

12. What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The PTO carries out only an examination on the application’s formal requirements and on absolute grounds for refusal.

If the PTO issues a remark, the applicant has two months to file its observations in reply. The PTO decision of rejecting the application may be appealed (within 60 days of the receipt of the PTO communication) before a board of appeal.

As the PTO does not carry out an examination on relative grounds, letters of consent are not present in the prosecution practice. If the application meets the formal requirements and passes the examination on absolute grounds for refusal, it is published and, failing a third party’s opposition within three months of the publication date, the application matures to registration.

Use of a trademark and registration

13. Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Neither use nor intention of use are prerequisites to file an application. During the course of the registration, evidence of use should not be submitted to substantiate the registration. However, non-use of a mark for five consecutive years (starting from the registration date) makes the mark vulnerable to a non-use revocation action by any interested third party. Such actions take the form of ordinary litigation before judicial courts, since administrative cancellation actions before the PTO, although provided by the legislation, have not yet been implemented. Foreign registrations are granted priority under the Paris Convention if filed within six months of the filing of the relevant national application in one of the countries in the Paris Union.

Markings

14. What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Symbols such as ® or the wording ‘marchio registrato’ can be used to indicate trademark registrations. However, this marking is not mandatory.

Using this symbol or wording for a not-yet-registered trademark – such as an application – may expose, at least theoretically, the relevant owner to some liability; the recent reform of the IPC has set the relevant sanction from €150 to €1,500 (article 127.2 of the IPC).

Adopting this symbol or wording may have a deterrent effect against third parties’ possible infringements.

Appealing a denied application

15. Is there an appeal process if the application is denied?

The applicant has 60 days from the receipt of the relevant decision to appeal a PTO decision before a board of appeal.

Third-party opposition

16. Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Applications are published for opposition by the PTO.

Article 176 of the IPC sets forth the following grounds for opposition:

• the subsequent application is identical with the earlier trademark and the goods or services for which the registration is applied for are identical with the goods or services for which the earlier trademark is protected;
• the subsequent application is identical with, or similar to, the earlier trademark and the goods or services are identical with or similar the ones covered by the previous trademark and because of its identity, or similarity exists a likelihood of confusion (the likelihood of confusion includes the likelihood of association with the earlier trademark);
• the subsequent application is identical with, or similar to an earlier trademark, 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 earlier trademark has a reputation in the European Union or in Italy, and 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;
• the subsequent application is identical with, or similar to an earlier trademark that is ‘well-known’ in the sense in which the words ‘well-known’ are used in article 6bis of the Paris Convention and 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;
• the subsequent application infringes the rights of third parties on portraits, names, and well-known signs under article 8.3 of the IPC (such as personal names, signs used in the artistic, literary, scientific, political or sports fields, and so on; and
• the subsequent application is excluded in accordance with EU laws relating to the protection of designations of origin and geographical indications.

The opposition must be filed within three months from the application’s publication date and the subjects entitled to file it are:

• the owner or the exclusive licensor of earlier trademarks (applications or registrations) effective in Italy;
• subjects entitled to exercise the rights on personal names or on people’s portraits;
• subjects entitled to use register a well-known sign under article 8.3 of the IPC (such as personal names, signs used in the artistic, literary, scientific, political or sports fields, and so on;
• subjects entitled to protect the rights conferred by a designation of origin or geographical indication and, in their absence, the Ministry of Agriculture, food sovereignty; and
• entities owning registration or application rights on a designation of origin and a geographical indication.

Once the PTO confirms that the opposition is admissible, it sets the deadlines of the opposition proceedings. There is a two-month cooling-off period for the parties to reach an amicable settlement, which may be extended through a joint request for a maximum of 12 months from the date of the PTO’s communication.

Once the cooling-off period is over, the adversarial part of the proceedings begins, and the opponent has a 60-day term to file its observations (submitting further facts, evidence or arguments) to substantiate the opposition. The applicant then has a 60-day term to file its observation in reply and to request evidence of use of the marks on which the opposition is based (provided that they are subject to the use requirement; ie, they were registered more than five years from the filing or priority date of the opposed application).

In such a case, the term for the opponent to file the proof of use is 60 days from receipt of the PTO communication (this term, however, can be extended up to six months).

The decision may be appealed before the board of appeal within 60 days of the day on which the decision is served.

The costs for filing an opposition are approximately €300 for official fees, including the fees for filing a special or general power of attorney.

After registration, a trademark may be canceled through ordinary litigation before judicial courts or, since 29 December 2022, through cancellation actions before the PTO.

According to article 184bis of the IPC, cancellation actions for invalidity can be filed on the very same relative grounds of opposition mentioned above and, as far as absolute grounds are concerned, whenever:

• the contested trademark should not have been registered because:
• it does not have distinctive character or it is descriptive;
• it consists of customary signs or indications;
• it consists exclusively of shapes or other characteristics that:
• result from the nature of the relevant products;
• are necessary to obtain a technical result; or
• give substantial value to the relevant goods; or
• it is contrary to public policy or accepted principles of morality;
• it is deceptive;
• it is evocative, usurpative, imitative of geographical indications and protected designations of origin;
• it is contrary to EU legislation or national law or to international agreements to which the European Union or Italy is party, providing for the protection of designations of origin and geographical indications;
• it is contrary to EU legislation or international agreements to which the European Union is party, providing for the protection of traditional terms for wine;
• it is contrary to EU legislation or international agreements to which the European Union is party, providing for the protection of traditional specialities guaranteed;
• it consists of, or reproduces in their essential elements, an earlier plant variety denomination registered in accordance with EU legislation or national law, or international agreements to which the European Union or Italy is a party, providing for the protection of plant variety rights, and that are in respect of plant varieties of the same or closely related species;
• it consists of signs that reproduce coats of arms and other signs recognized in international conventions or symbols, emblems and coats of arms that are of public interest (including signs associated with law enforcement authorities, armed forces, names of states and territorial public entities) unless the competent authority has authorized its registration; or
• it consists of signs that contain words, figures or signs harmful to the image or repute of Italy; and
• the contested trademark has been filed in the name of an agent or representative of the proprietor of the trademark, without its consent.

The subjects entitled to file a cancellation action for invalidity before the Italian PTO are the following:

• any interested third party, if the trademark was registered in the absence of legal requirements;
• the owner of a prior trademark or the subject authorized to exercise the rights deriving from a designation of origin or a geographical indication, if the trademark was registered notwithstanding the existence of a prior right; and
• the subject owning rights on a trademark, if a trademark has been filed in the name of an agent or representative of the proprietor of the trademark, without its consent, unless the agent or representative justifies his or her action.

There are two grounds of invalidity that can be invoked only in ordinary litigation before judicial courts: bad faith filing and likelihood of confusion with earlier unregistered marks, corporate names, domain names and other distinctive signs that enjoy a sufficient level of consumer recognition in Italy.

A revocation action before the Italian PTO could be filed by any interested third party on any of the following grounds:

• the trademark has not been put into genuine in connection with the goods and (or) services in respect of which it is registered for five consecutive years subsequent to the date of registration;
• the trademark has become a generic indication of the goods and (or) services or has, in any event, lost its distinctive character as a result of the activity or inactivity of its proprietor; and
• the trademark is likely to mislead the public, in particular as to the nature, quality or origin of the goods or services, due to the manner and context in which it is used by its proprietor or with his or her consent, for the goods or services for which it is registered.

The notice of cancellation action for invalidity or revocation must contain, inter alia, the grounds on which the action is based. Once the PTO confirms that the action is admissible, it sets the deadlines of the proceedings. There is a two-month cooling-off period for the parties to reach an amicable settlement, which may be extended through a joint request for a maximum of 12 months from the date of the PTO’s communication.

Once the cooling-off period is over, the adversarial part of the proceedings begins. The owner of the contested trademark has a 60-day term to file its observations and, in the framework of cancellation actions, request the evidence of use of the marks on which the action is based (provided that they are subject to the use requirements; namely, they were registered for more than five years at the time of filing of the request for cancellation).

If the owner of the contested trademark files observations and requests the evidence of use, the applicant has a further 60-day term to file its observations in reply and to provide the Office with the evidence requested (this term is extendable up to six months).

The decision may be appealed before the Board of Appeal within 60 days from the day on which the decision is served.

The official fees for filing a cancellation action (for invalidity or revocation) are approximately €550, including the fees for filing a special or general power of attorney.

Duration and maintenance of registration

17. How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The registration remains in effect for 10 years from the application date and can be renewed until six months after the expiry date (paying, in the case of a six-month delay, a default fee of €34).

Evidence of use is not requested, but if the use of a mark is suspended for five consecutive years (from the registration date), the mark is subject to a revocation action.

Surrender

18. What is the procedure for surrendering a trademark registration?

The owner of a trademark may withdraw an application or surrender a registration at any time. The petition can also be filed online. If surrendering a registration, the owner shall register the declaration of surrender before the Revenue Agency, pay the relevant fees and enclose the declaration for the petition to be filed with the PTO.

Once the PTO has examined the petition, and if it meets all formal requirements, the withdrawal or surrender is accepted.

Related IP rights

19. Can trademarks be protected under other IP rights?

Signs that can be registered as a trademark may, under certain conditions, also be protected with copyright and through a design registration. However, given the implications that doubling the protection of a sign may imply, especially for non-traditional trademarks, this evaluation should be done on a case-by-case basis.

Trademarks online and domain names

20. What regime governs the protection of trademarks online and domain names?

Trademarks online are handled as traditional trademarks.

Domain names, in particular, are considered distinctive signs. Trademark owners may inhibit the use of a domain name that infringes their trademark rights through ordinary litigation before the judicial courts.

Cases of cybersquatting of the .it country code top-level domain are handled with Uniform Domain-Name Dispute-Resolution Policy procedures.

LICENSING AND ASSIGNMENT

Licenses

21. May a license be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement?

The main advantage of recording a license agreement, which is not compulsory under Italian law, is the possibility of making third parties aware of the existence of a license and to object to third parties that could have entered into agreements (license or assignment) for the same trademark. license agreements typically include provisions on the licensed properties and products, the terms (such as the start and termination dates of the license), territory, scope, net sales (clauses often require certain guaranteed minimum net sales), royalties and quality control.

It is advisable to insert in license agreements clear provisions on the party that is entitled to the enforcement of the licensed intellectual property rights and on the liability for the infringement of third parties’ rights.

Assignment

22. What can be assigned?

Assignment of trademarks is possible with or without goodwill. Trademarks may be assigned totally or partially (namely, only for some goods or services).

Assignment documentation

23. What documents are required for assignment and what form must they take? What procedures apply?

Theoretically, there is no need for specific documents to assign a mark. However, a written form is necessary to prove that the transfer of assignment has taken place; therefore, a written form of the assignment is highly recommended.

Validity of assignment

24. Must the assignment be recorded for purposes of its validity?

Filing the assignment with the Italian patent and trademark office (PTO) is not compulsory, but recommended. In the case of controversies among many assignees claiming to have acquired rights in good faith, the first assignee that has recorded the assignment will prevail.

The petition to record the assignment shall be accompanied by the assignment agreement or a declaration of the given assignment (which does not need to be legalized or notarized) previously registered at the Revenue Agency. If the petition meets all formal requirements, the assignment is recorded.

Security interests

25. Are security interests recognized and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Security interests are recognized in Italy and are based on monetary receivables. To be enforced, they must be recorded with the PTO. To this end, the relevant deed, executed by all parties, has to be notarized and apostilled.

ENFORCEMENT

Trademark enforcement proceedings

26. What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialized courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Under Italian law, trademark owners may rely on both civil and criminal proceedings to enforce their rights. These proceedings are different in nature and pursue different objectives, so an efficient enforcement would call for a careful case-by-case assessment to identify the best course of action.

Resorting to civil litigation is the most common course of action in trademark infringement cases. Civil proceedings may target both registered and unregistered marks. They are meant to stop the alleged infringement (by restraining orders) and possibly mitigate its consequences (by other available remedies, such as damages). These cases are handled by specialized civil courts in business matters, which also act as EU trademark courts. Trademark owners maintain control over these actions and may decide to withdraw them even at a later stage of the proceedings.

Criminal proceedings can target willful infringements of registered marks only. They pursue the public interest of good faith and fairness in the course of trade, so the relevant infringer might face a fine or imprisonment if he or she is found liable of the charged crime. Although criminal litigation is a very useful tool in counterfeiting cases, it might imply significant drawbacks for trademark owners, especially because they do not have full control over the case. For instance, once criminal enforcement is under way, trademark owners cannot block the relevant proceedings, and this might impair their ability to settle a case.

From an administrative standpoint, trademark owners may file an application for action with customs authorities to take action vis-à-vis goods suspected of being counterfeit and obtain a seizure of the same.

Procedural format and timing

27. What is the format of the infringement proceeding?

Civil proceedings might take the form of ordinary or interim proceedings. Specifically, trademark owners may institute:

• ordinary civil proceedings by serving a writ of summons upon the alleged infringer. These proceedings usually go through three stages:
• the introductory stage, whereby the parties exchange their initial briefs (namely, the writ of summons and the briefs of intervention and reply), the judge carries out some preliminary checks on the regularity of the action;
• the evidentiary stage, in which the parties may exchange three sets of briefs, whereby they define the scope of their respective claims, put forward evidentiary requests and file supporting documents; at the first hearing, the judge explores the possibility of a settlement and may ask the parties for clarifications. All the evidentiary activities are carried out during specific hearings; and
• the final stage, whereby the parties set forth their final claims and exchange their final briefs. A final hearing might be held upon the parties’ request. The final decision is issued by a panel of three judges and may be appealed on both matters of law and facts before a court of appeal; appeal decisions may be further challenged on matters of law before the Supreme Court; or
• interim proceedings, by filing a petition for interim relief before or while pending litigation on the merits. Usually, these proceedings are rather fast, with, on average, one exchange of briefs, one hearing and a decision issued in a few months. There is only one judge handling the first-instance phase, while the possible appeal is decided by a panel of three judges.

With regard to the means to acquire evidence in civil proceedings, although Italian law does not provide for discovery as is understood by common law countries, trademark owners may still rely on rather effective tools to acquire information on the nature and extent of infringements and to access the infringers’ financial and commercial documents, which are essential for an adequate damages award.

Interim proceedings are often very effective tools to acquire evidence to be used in the litigation on the merits; in particular, if there is a risk that the infringer could remove or destroy evidence of the wrongdoing, measures such as descriptions and seizures can even be given ex parte, in which case they are carried out before the defendant is aware of the action and then confirmed or revoked upon review of the defendant’s arguments.

Criminal proceedings are instituted by the public prosecutor either ex officio (for certain crimes) or upon the filing of a criminal complaint by an injured party (namely, the owner of the alleged infringed mark). The public prosecutor carries out pretrial investigations in secret, which usually last one to two years. Once this phase is over, the judge decides whether to go through with the trial or dismiss the case. If the trial starts, the owner of a registered mark may join the proceedings as an aggrieved party.

Under criminal law, the most effective means to acquire evidence are search and seizure orders. Seizures are carried out either by enforcement authorities autonomously or pursuant to a party’s filing of a criminal complaint. The seizure can involve not only infringing products but also accounting books and, in general, any document useful for the investigation.

Burden of proof

28. What is the burden of proof to establish infringement or dilution?

The owner of a registered mark has the burden of proving that its mark has been infringed. A mark is infringed whenever there is use in the course of trade of an identical sign for identical goods or services, or of an identical or similar sign for identical or similar goods or services provided that the risk of confusion may arise on the part of the public, which may also consist of a risk of association.

If it is proved that the registered mark that is allegedly infringed enjoys a reputation, the infringement is established, irrespective of any likelihood of confusion or association, when use of an identical or similar sign without due cause gives rise to any unfair advantage to be taken of, or is detrimental to, the distinctive character or reputation of the registered mark. The reputation of a mark may amount to a ‘well-known fact’ under Italian law.

When it comes to unregistered marks, the relevant owner must establish both that the relevant sign is entitled to protection as a de facto mark and that an infringement has occurred.

Standing

29. Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Trademark owners and, under certain conditions, their licensees have standing to bring civil infringement actions.

Under criminal law, proceedings are instituted by the public prosecutor, either ex officio (for certain crimes) or upon the filing of a criminal complaint by an injured party (namely, the owner of the alleged infringed mark).

Border enforcement and foreign activities

30. What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Trademark owners may file an application for action by Italian customs authorities to have the relevant authorities stop and seize infringing goods.

As to foreign activities, based on the principle of territoriality, only activities carried out in Italy or targeting Italian consumers may be taken into consideration to determine whether there has been a trademark infringement.

Discovery

31. What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Italian law does not have discovery as is understood in common law countries. Nonetheless, trademark owners may rely on effective discovery and disclosure tools to acquire information on the nature and extent of infringements and to access infringers’ financial and commercial documents. In particular, if a party has provided serious evidence that its claims are grounded and has identified documents, elements or information held by the other party that confirm this evidence, it may request that the judge order their disclosure or request the information from the other party. This order is not enforceable and it is up to the party to comply with it.

However, the judge can infer ‘circumstantial evidence’ from the party’s answers and from any unjustified refusal to comply with the order of disclosure. Moreover, in the case of counterfeiting on a commercial scale, based on a grounded and proportionate request from a party, the court may order that information on, inter alia, names and addresses of the manufacturers, distributors and suppliers, and quantities and prices of the counterfeit goods is acquired through an interrogation either of the infringer or those found in possession of the goods. If the infringers do not comply with these requests, criminal penalties may be applied.

Timing

32. What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

First-instance ordinary civil proceedings usually last around two to three years, at least in the most experienced courts, and the same time frame applies to the possible further appeal stages before the Court of Appeal and then the Supreme Court; going through all three levels of jurisdiction might take up to 10 years. In the case of interim proceedings, the typical time frame is much shorter, as it usually takes around three to four months to get a decision, with the same time frame applying to the possible further appeal stage.

As for criminal proceedings, it takes around one to two years until the pretrial investigation phase is over and the trial begins, but it can also still take up to 10 years for the decision to become res judicata.

Limitation period

33. What is the limitation period for filing an infringement action?

Generally, trademark owners may institute infringement actions at any time. The lapse of time between the knowledge of the infringement and the institution of an action might be nonetheless relevant. For instance, it might have an impact on the viable courses of action, as trademark owners might be precluded from instituting interim proceedings, as one of the prerequisites for a successful action is irreparable harm and Italian courts have a tendency to view a prolonged tolerance on the part of the plaintiff as an indication of lack of irreparable harm.

There is also a statute of limitations of five years applicable to damages claims. Further, a prolonged coexistence of the conflicting marks on the market might be considered as a factor ruling out the risk of confusion, in addition to entitling the alleged infringer to an acquiescence defense (whenever the trademark owner has tolerated, being aware, the use of a registered mark for a period of five years, unless registration of the later mark was applied for in bad faith).

Litigation costs

34. What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The costs of a civil action depend on the complexity of the case, its duration and the appointed counsel. At the end of an action, the court generally awards attorneys’ fees to the prevailing party unless there are special circumstances that may induce the court to decide that each party bears its own attorneys’ fees. However, even when legal fees are awarded to the prevailing party, the amount that can be recovered does not cover the actual fees incurred, but simply a percentage of the same, which is often one-third to one-quarter of the actual costs.

Criminal actions are usually less expensive because the governmental authorities perform part of the work, including all investigations.

Overall, the costs of litigation in Italy are not exorbitant and can be afforded, even by small enterprises.

Appeals

35. What avenues of appeal are available?

First-instance decisions rendered in criminal and civil cases may be appealed before the Court of Appeal on both matters of law and fact. The Court of Appeal’s decisions may be further appealed before the Supreme Court on matters of law only.

Defenses

36. What defenses are available to a charge of infringement or dilution, or any related action?

There are many defenses and counterclaims that may be brought against an infringement action. The most common are that there is no infringement, or that the allegedly infringed trademark is invalid or has lapsed owing to non-use.

Remedies

37. What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

Remedies that can be obtained at the end of ordinary civil proceedings include damages awards, disgorgement of profits, restraining orders (almost always accompanied by a penalty to secure compliance with the order), seizures of goods, orders to recall the goods from the marketplace, destruction of goods bearing the infringing mark and publication of courts’ decisions in newspapers or magazines, websites and social media.

Italian courts usually award damages based on one of the following criteria:

• trademark owners’ lost profits (on which judges rarely rely);
• infringers’ profits; and
• ‘reasonable royalty’, which is the royalties that the infringer would have had to pay had it requested the authorization to use the infringed trademark, sometimes increased to preserve the decision’s deterrent effect.

Save for damages and disgorgement of profits, the measures that can be obtained by bringing interim proceedings are basically equivalent to those that can be achieved at the end of a full litigation on the merits. However, these measures would cease to be effective if ordinary civil proceedings are not instituted within 20 working days or 31 calendar days, with the exception of temporary restraining orders, which would remain in place even when litigation on the merits is not instituted.

The prerequisites for obtaining interim measures are the color of right, and the danger of imminent and irreparable harm. Where there is a risk that the infringer could remove or destroy evidence of wrongdoing or where a delay in issuing the interlocutory decision could cause irreparable harm to the rights holder, these measures – especially descriptions, seizures and restraining orders – can be given ex parte, in which case they are carried out before the defendant is aware of the action and then confirmed or revoked upon review of the defendant’s arguments.

In criminal proceedings, at the end of the trial, if the defendant is convicted, the judge orders the confiscation and destruction of the seized goods in addition to the publication of the decision in a newspaper, magazine, website or social media. Unlike the criminal system of many other countries, in Italy, it is extremely difficult for the aggrieved party to actually obtain an award for damages.

Theoretically, during the trial, the judge could issue a provisional order, which is immediately enforceable, ordering the defendant to pay damages in an amount considered justified in light of the evidence collected; however, in practice, this order is very seldom granted and sometimes revoked or amended later on in the proceeding or during the appeal.

ADR

38. Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Although it is possible to resort to arbitration as an alternative to court proceedings, ADR has not traditionally enjoyed a great deal of success in trademark disputes in Italy, except for domain name disputes.

UPDATE AND TRENDS IN TRADEMARKS IN ITALY

Key developments of the past year

39. Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Italy is confirmed as a country that values well-known marks, with courts granting a broad scope of protection to these marks at both civil and criminal level.

In this regard, it is worth mentioning that Italian scholars and case law generally agree that even uses of well-known marks other than uses for the purposes of distinguishing goods or services might amount to trademark infringement. In particular, the Italian Supreme Court was recently called to interpret the provision related to well-known marks with respect to a parody or freedom of expression defence relied on in a case involving the mark ‘Zorro’ and held that:

“the exploitation of a third-party’s mark, if well-known, is forbidden [under Italian trade mark law] where the use of the relevant sign without due cause, made in the course of trade, takes unfair advantage of, or is detrimental to the distinctive character or the repute of the trade mark, regardless of whether the trade mark is used to distinguish the goods or services of the author of the use, as may be the case with the parody representation of the trade mark in question.”

(See International – Compagnia Generale Distribuzione SpA v Zorro Productions Inc (CO GE DI), Italian Supreme Court, 11 October 2022, Decision No. 38165/2022.)

Likewise, on the criminal front, the approach of the Italian Supreme Court to the protection of well-known marks is particularly favorable. Indeed, in a recent case involving fashion houses Burberry and Gucci, the Court has stressed that the criminal protection of a famous trademark extends to every category of product, if its imitation is likely to harm the public faith (see Italian Supreme Court, 2 March to 19 May 2023, Decision No. 752/2023).

* The information in this chapter was accurate as at August 2023.

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“The article’s content refers to the regulations that were applicable at the time of its creation and is intended solely for reference purposes. To obtain accurate information, it is advisable to seek the guidance of a consulting lawyer.”

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