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National Trademarks  |
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Every new sign which can be represented graphically
and is capable to distinguish the goods or services applied for
from those of other companies may be registered as a trade or service
mark, including personal names, designs, letters, numerals, sounds,
three-dimensional trademarks, color combinations or chromatic tonalities
(it is advisable to indicate the relevant color code).
Goods and services are divided into the same forty-two
classes as proposed by the Nice International Classification.
Each application may comprise goods or services from different classes
or claim one or more entire headings of same.
There are no series of marks or associated marks accepted.
The Italian Patent and Trademark Office examines the mark on absolute
grounds only, i.e. determines whether it is distinctive, not deceptive,
and complies with the Law, meaning that there is no novelty examination
against prior trademark applications or registrations.
A registration may be obtained independent from prior, actual or
intended use.
No widespread official advertisements of applications,
registrations, transfers, refusals etc. are published, such as Official
Gazette and the like, but they are made available upon request and
the relevant copies may be obtained directly at the Italian Patent
and Trademark Office.
Registration is granted for a period of ten years
from the date of application and may be renewed thereafter for like
periods.
The right to the exclusive use of a mark derives from registration
in good faith, but protection is effective as soon the application
is filed.
The first applicant is entitled to registration; however, a prior
user (including use as a trading style, trading name or sign-board)
may enforce his rights against the registrant, provided that his
de facto trademark is well-known to Italian customers.
Italian trademark law makes no provisions for an administrative
opposition procedure. If negotiations do not lead to the private
settlement of the conflict or even prescinding from negotiations,
the interested party may file a cancellation action at the Civil
Courts.
Following case law (this view being contested by the prevailing
legal opinion in literature), it is not admitted requesting the
cancellation of a pending application, insofar as the Courts leave
the first decision on the registrability of the trademark to the
PTO, so that the plaintiff has to wait until its grant, limiting
his action mainly to the inhibition of the use of the trademark
and to possible damages.
By Legislative Decree of October 8, 199, n° 447, Italian Trademark
Law provides an opposition procedure; said procedure is not operative
as yet.
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