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Praxi Intellectual Property S.p.A.
Rome, Italy (IT)

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Barzano & Zanardo
Milan, Italy (IT)

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De Tullio & Partners
Rome, Italy (IT)

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Italy (IT)

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06-30-2015 (Newsletter Issue 10/15)
New Online Filing System Mandatory
Since May 18, 2015, it has been mandatory to file applications for patents for industrial inventions, utility models, designs, company trademarks, and Italian portions of granted European patents using only the new centralized portal set up by the Italian Patent and Trademark Office (IPTO). It is therefore no longer possible to file such applications on the telematic platform used up to now. If they are filed with the Chambers of Commerce, acting as branch offices of the IPTO, then the Chambers of Commerce will submit the applications using the new, centralized portal.

For the first few days of using the new filing system – as was to be expected – there have been some difficulties, and a number of areas need to be improved or changed. The IPTO, in any case, is in continual contact with firms working in the sector and despite the short period that has elapsed since the new procedure was rolled out, many problems have already been resolved and the new system is now even more usable and reliable.

Also, payment of the fees and dues can no longer be made with postal orders, but exclusively with online payments.

Source: Modiano & Partner, Italy


06-30-2015 (Newsletter Issue 10/15)
IR Designating Italy Do Not Automatically Cover San Marino
On 23rd December 2014, the Patent Office of San Marino issued a recent interpretation of Article 43 of the Convention of Friendship and Good Neighbourhood entered into by Italy and the Republic of San Marino. Article 43 of the Convention defines that: "Each of the two States is obliged to prevent, within its territory, any usurpation of inventions, models and designs that are subject, in the other State, to industrial property rights, and any usurpation or infringement of trademarks or brand names duly registered and protected in the other State".

Based on this new interpretation, which was provided by the San Marino patent office following ratification of the exchange of notes between Italy and San Marino, as from 23rd December 2014 mutual recognition will only apply to trademarks, patents, designs and models registered or granted based on national applications, namely applications filed with the Italian Patent and Trademark Office or with the San Marino Patent and Trademark Office.

Consequently, it will no longer be possible for the holder of an international trademark or a European patent to enjoy protection also in San Marino simply by extending the scope of protection to Italy. Therefore, holders of European patents and international trademarks who wish to protect their inventions in the Republic of San Marino will be obliged to pay the national fees to the San Marino Patent Office.

Source: Rapisardi Intellectual Property, Italy


07-30-2012 (Newsletter Issue 12/12)
Grants for Registering CTM and IR
The Italian Ministry for Economic Development is providing non-returnable grants to companies who wish to register their trademarks abroad as Community trademarks (CTM) or international designated trademarks (IR). The announcement was published in the Italian Official Journal No 105 of 7 May 2012.

a) A grant of 80% of costs incurred up to a maximum of EUR 4,000 per CTM application filed, up to a maximum grant per company of EUR 15,000 for applications filed for registration of CTMs with the OHIM after the publication of the call.

In order to access the grants companies need to have carried out at least one of the following activities:
- Filed an application for registration with the OHIM for a new trademark;
- Filed an application for registration with the OHIM for an owned trademark registered or filed nationally;
- Filed an application for registration with the OHIM for a trademark acquired from a third party that was already registered or filed nationally.

b) A grant of 80% of costs incurred up to maximum of EUR 4,000 (EUR 5,000 with a 90% grant if designating China or Russia) for each application for an international trademark designating a single country, and EUR 5,000 (EUR 6,000 with a 90% grant if designating China or Russia) for applications designating two or more countries. The maximum grant per company is EUR 15,000.

Measure b) is available to companies that on the date of filing of the application own a trade mark registered at Community or national level, including those who have acquired such marks from third parties, or who have already filed an application for a national or Community trade mark: grants are available for extension of the said marks by means of the WIPO procedure and are also available for subsequent designations.

Resources for both measures will be assigned on a first-come, first-served basis in accordance with the chronological order of applications made (considered filed as of the moment of submission of the online form) while funds last. Only costs incurred between 7 May 2012 and the date of filing of the application will be eligible.
Grant applications may be made as of 4 September 2012.

The following expenses are eligible for reimbursement: design of the new trade mark; prior art searches and assistance in the application process; assistance for purchasing of trademarks filed or registered at national level; assistance for the licensing of the trademark; filing fees.

For further information on the grant and forms, please click here

Source: Rapisardi Intellectual Property, Italy


07-01-2011 (Newsletter Issue 9/11)
Examination Backlog Cleared
The Italian Patent and Trademark Office announced that its trademark examination backlog has been cleared. Around 160,000 trade mark files were waiting for attention in March last year. A special taskforce of examiners and streamlined processes were introduced to make the office more efficient.

Source: www.uibm.gov.it, www.oami.europa.eu


05-05-2011 (Newsletter Issue 7/11)
Opposition Possible Now
Trademark opposition will finally become available in Italy in July 2011; a ministerial decree has been signed that lays down the details of the procedure, including costs and deadlines.

Trademarks subject to opposition
a) Italian trademark applications filed as of May 1, 2011.
b) Italian designations of International trademarks, irrespective of their registration (or subsequent designation) date, published on WIPO’s Gazette as of July 2011.

Time limit
Three months starting from the publication date of the application on the National Bulletin or from the first day of the month subsequent to the publication of the Italian designations of International trademarks on WIPO’s Gazette.

Official fees
A fee of Euro 250 must be paid prior to the filing of the opposition.

For more information, please click here

Source: SIB Società Italiana Brevetti, Italy


04-14-2011 (Newsletter Issue 6/11)
Opposition Procedure Operational Soon
A high official of the Italian Patent and Trademark Office (IPTO) told the assembly of the Italian Institute of Intellectual Property Consultants that the opposition procedure for Italian trademarks is to become operational very soon. Most likely, it will be available for Italian trademark applications filed as from May 1st, 2011.

Furthermore, the current registration process could be speeded up to 3 to 6 months after filing, in contrast to 2-3 years until last year.

Source: SIB Società Italiana Brevetti, Italy


08-01-2010 (Newsletter Issue 13/10)
Accession to the Singapore Treaty
The World Intellectual Property Organization (WIPO) informs of the deposit by the Government of the Republic of Italy, on June 21st, 2010, of the accession to the Singapore Treaty on the Law of Trademarks. The Treaty will enter into force on September 21st, 2010.

Source: www.wipo.int


Legal basis of the Italian trademark legislation is the Code of Industrial Property Rights which entered into force on March 2005 and was slightly amended in 2010. It replaced the Trade Marks Act in force since January 1993, amended 1999. An Italian trademark will be valid in San Marino, by virtue of a treaty between the two States and according to the doctrine it may be recognised in the Vatican State.
Italy is a member of the Madrid Agreement, the Madrid Protocol and the European Union.
Trademark protection is obtained by registration. Earlier use of a non registered sign (so-called “marchio di fatto”) that has acquired a certain reputation beyond a purely local level, precludes the later registration of the same or similar sign. On the other hand, a sign used solely locally and enjoying at the most a purely local reputation can continue to be used within the local area, but shall not bar a later national registration by another owner.
Nice classification, 11th edition
Registrable as a trademark are all distinctive signs such as words, names, acronyms, letters, numbers, devices, colours and colour combinations, the three-dimensional form of a good or its packaging as well as sound marks and any combination of the mentioned signs. Names of renowned individuals, signs or logos used in public (art, sport, political, etc.) or of denominations of non-profit associations are registered only by their owners or legitimate users or with their consent.
The following trademark types are registrable: trademarks, service marks and collective marks.
The application can be filed at the Italian Patent and Trademark Office (UIBM) directly by means of an on-line application or through the Chambers of Commerce.
Multiple-class applications are possible.
Foreign applicants do not need a local agent. However, a local address for service will be required.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The processing time from first filing to registration is up till 12 months if no opposition is lodged.
The application process includes a formal examination and an examination on absolute grounds but no search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use prior to filing. Following the submission, the trademark application is made publicly available at the Italian Patent and Trade Marks Office. As of July 2011, Italian trademark applications are published online in a monthly Bulletin.
National:
The opposition period is 3 months from the date of publication in the above mentioned Bulletin for Italian trademark applications filed as of May 1st, 2011. A fee of EUR 250.- must be paid prior to the filing of the opposition, in addition to stamp duties for filing the opposition as well as for the filing of the power of attorney should the latter not have been filed yet.

Details regarding the Opposition Period against designation of IR Mark are available in our publication on this topic here
Protection begins with the date of application. A trade mark registration is valid for 10 years from the anniversary date of the first filing of the application. The registration is renewable for periods of 10 years. No evidence of use is required.
The grace period for renewals is 6 months, which starts on the day following the last day of the month in which the trade mark was due for renewal.

Further practical details are available in our publication on this topic here
If the trademark has not been used within 5 years from registration or if its use is discontinued for more than 5 consecutive years, it may be subject to cancellation.

Further practical details are available in our publication on this topic here
The official fee is approx. EUR 160.00 for one class and approx. EUR 34.00 for each additional class, excluding trademark agent charges, stamp and other duties. The official fee payable on filing the power of attorney is a further EUR 34.00.

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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here.
Search type First class Add. class
Word Mark Search (availability) 170,00 € 40,00 € 
Word Mark Search (identical) 60,00 € 20,00 € 

The Prices above are SMD Group Search Fees
Country Index is a free service of SMD Group. We thank the following law firms for their assistance in updating the information provided.

Country Survey
03-24-2017
Praxi Intellectual Property S.p.A., Rome, Italy  

03-18-2016
Praxi Intellectual Property S.p.A., Rome, Italy  

11-11-2014
Praxi Intellectual Property S.p.A., Rome, Italy  

04-10-2013
Praxi Intellectual Property S.p.A., Rome, Italy  

01-03-2012
Società Italiana Brevetti S.p.A., Firenze, Italy



Praxi Intellectual Property S.p.A.



Irma Spagnulo

Irma Spagnulo
Viale degli Ammiragli 91
00136 Rome
Italy (IT)
Tel +39 06 3974 9985
Fax +39 06 8535 1514
irma.spagnulo@praxi-ip.praxi
www.praxi-ip.com

Praxi Inllectual Property S.p.A. is an intellectual property consultancy with offices in Turin, Milan, Rome, Verona, Genoa and Padua, providing consistent, high-quality and market-oriented services.

We specialise in the filing, prosecution, evaluation, strategic portfolio management, maintenance and passive and active defence of all types of IP rights, including:
- trade marks,
- designs,
- patents,
- utility models,
- copyright,
- domain names.

Praxi Intellectual Property S.p.A.’s client-oriented team takes the time to understand the background of a case.

Our firm assists local and international clients from all spheres of industry, including representation before the Italian PTO and Appeal Board, EUIPO, EPO and WIPO.

Please contact us if you would like more information.

Barzano & Zanardo



Alessandra Tedesco

Alessandra Tedesco
Via Borgonuovo 10
20121 Milan
Italy (IT)
Tel +39 02 626131
Fax +39 02 6598859
b-zmilano@barzano-zanardo.com
www.barzano-zanardo.com

All Barzanò & Zanardo attorneys are prepared to deal with any complex problem relating to their specific Intellectual Property expertise through both in-house training and specialized publicly available courses, designed and aimed at achieving their full preparation and official graduation in Italian and European level.

Our patent attorneys are trained to offer advice in all traditional technical fields as well as in those of the most recently developed technologies, from mechanics to electronics, from chemistry to biotechnology, from the topography of semiconductor to plant variety, for filing and enforcing patents in Italy and everywhere abroad.

Among the tasks carried out by our patent attorneys, besides the assistance to the clients in the enforcement of their patents, there are the technical expertise as experts independently appointed by Italian Courts in patent judicial disputes (full scale law-suits and injunction proceedings). Our patent attorneys further interact with the attorneys of the legal department, as far as the licenses and technology transfers are concerned.

The legal department is involved by legacy in the protection of marks, company names and logos, domain names, in addition to Copyright and software. Therefore rather important is the activity of availability searches with its related advices and the subsequent phase of registration for trademarks and domain names carried out both domestically and in any given foreign Country.

B&Z also carries out the activity of due diligence as a supplement to the acquisition and/or incorporation of companies.

De Tullio & Partners



Elio de Tullio

Elio de Tullio
Via Domenico Cimarosa 13
00198 Rome
Italy (IT)
Tel +39 06 85356383
Fax +39 06 85351514
info@detulliopartners.com
www.detulliopartners.com

De Tullio & Partners is a Rome-based high-tech intellectual property law firm established in 2005 by the IP-specialised lawyer and industrial property attorney Elio De Tullio, which offers a wide range of innovative services in all fields of intellectual property, such as trademarks, patents, designs, copyright and new technology rights.

De Tullio & Partners offers assistance in relation to the management of Clients’ intellectual property portfolios, the enhancement of the value of their intellectual property rights - for the purpose, among other things, of financing their activities - and the adoption of actions and strategies in the fight against counterfeiting and piracy.

De Tullio & Partners provides assistance in the filing and prosecution of applications for the registration of intellectual property rights, litigation before the Italian courts and alternative procedures, as well as in negotiating and drafting agreements for the exploitation of IP assets.

De Tullio & Partners also provides consultancy services in support of the strategic choices made by businesses, helping them to set up solid business models and negotiate advantageous agreements, as well as allowing them to develop - thanks to advance long-term cost and result strategic planning - their potential to the maximum extent possible.

De Tullio & Partners is able to draw on the IP-related skills and experience of its multilingual team of lawyers and technical staff, who can assist businesses in all aspects of IP.

De Tullio & Partners’ professionals are also authors of numerous publications and regularly participate, as speakers, in local and international conferences.

Ufficio Italiano Brevetti e Marchi, Ministero dello Sviluppo Economico (UIBM)
Sala del pubblico
Via Molise, 19
00187 Roma
Italy
Tel +39 064 70 55 65 4
www.uibm.gov.it

European Union Intellectual Property Office (EUIPO)
Avenida de Europa, 4
03008 Alicante
Spain
Tel +34 965 139 100
Fax +34 965 131 344
Mail information@euipo.europa.eu
www.euipo.europa.eu


World Intellectual Property Organization (WIPO)
34, Chemin des Colombettes
1211 Geneva 20
Switzerland
Tel +41 22 33 89 11 1
Fax +41 22 73 35 42 8
www.wipo.int