In order to secure trademark protection in Italy, one either register with the Ufficio Italiano Brevetti e Marchi (UIBM) or file a European Union Trademarks (EUTM) application, which provides protection throughout the European Union.
The Madrid Protocol includes Italy as a signatory. As a result, this country can use the Madrid System to extend an international trademark registration.
Filing requirements at a minimum
In order to secure a filing date in Italy, a trademark application must include the following information:
– applicant’s data (name, address, nationality);
– list of goods/services;
– pictures of the trademark (.jpeg format);
– payment of the filing fee.
A certified copy of the priority application must be filed within six months of filing the trademark application in Italy to confirm the right of priority. If the priority document’s certified copy is filed in a language other than Italian, the Italian Patent Office must receive a translation into Italian within two months of the priority document’s filing date.
The Power of Attorney’s Requirements
The Power of Attorney does not need to be notarized or legalized. Within two months of filing the Italian trademark application, it should be filed.
Term of Validity and Renewal
In Italy, a trademark is valid for ten years from the date of filing and can be renewed continuously for the same period of time. A renewal application can be submitted one year before to the registration’s expiration date and up to six months after that date. A signed Power of Attorney is necessary.
Period of opposition
The opposition period begins three months after the trademark is published in a monthly Bulletin on the website of the Italian Patent and Trade Marks Office.
Use requirement
In Italy, a trademark registration will lapse if it is not used within five years of registration or if it is not used for more than five years in a row.
Representation by a trademark attorney
It is advised that foreigners residing outside of Italy or the European Economic Area (EEA) conduct trademark prosecution through an agent: a registered Italian trademark attorney or a foreign lawyer with an address for service inside the EEA.
You could find the list of Italy IP Firms here.