San Marino (SM)
Legal basis is the Law No. 79 of 25 May 2005 (Industrial Property Sole Act), in force since 9 June 2005 and slightly amended by Law No. 114 of 20 July 2005.
An Italian trade mark enjoys protection in San Marino (and vice versa), by virtue of a treaty between the two States.
San Marino is a member of the Madrid Agreement and the Madrid Protocol, but not of the European Union.
Trade mark 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 registration by another owner.
Nice classification, 10th edtion
Registrable as a trade mark are all distinctive and graphically representable signs, such as words, personal names, three-dimensional form of a good or its packaging as well as sound marks, letters, numerals, colour combination of shades and any combination of the mentioned signs.
The portrait of a person, names of renowned individuals, renowned signs or logos used in public (art, sport, political) or denominations of non profit-associations are registered only by their owners or legitimate users.
The following trade mark types are registrable: trade marks, service marks, collective marks.
The application is filed at the Patent and Trademark Office (USBM). Multiple-class applications are possible. An application can include goods in any number of classes, but with additional charges for each additional class from the fourth.
Foreign applicants need a local agent. A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration but are entitled to registration in San Marino based on reciprocity.
The application process includes a formal examination, an examination on absolute grounds but no search for prior trade marks.
Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
Trade mark applications accepted by the Registrar are published in the official gazette; prior to registration. The approximate time frame for completing the registration process of a trade mark in San Marino is from 12 to 18 months.
Opposition proceedings before the Patent and Trademark Office are provided for by the law but are not yet operational and will be possible only in the future, once the relevant rules are issued by the Director of the Office. In the future, oppositions may be filed within 3 months from the publication of the application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
3 months (not operational yet). From the date of publication in the WIPO Gazette.
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.
If the trade mark 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.
The official application fee is Euro 150.00 for an application in up to 3 classes and Euro 40.00 for each additional class from the fourth.
There are no publication nor registration fees.
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
A license may be granted without a written form, but a written licence will be necessary for recordal. It is permissible to licence the use of unregistered trademarks. Licences may be granted for all or part of the goods or services for which the trade mark is registered, provided that the other legal requirements are complied with (see above page 1 under terms of licensing). The sale of a registered trademark does not automatically terminate the license. A licence agreement must not result in misleading the public as far as the features of the licensed goods/services which are essential for the appraisal by the public are concerned (Article 74 (8) Industrial Property Sole Act).
In addition, licence agreements must provide for an actual control by the licensor on the quality of the licensed goods or services. If such quality control is not provided for in the licence agreement or if it is not carried out by the licensor, the licence agreement is not valid and the exclusive rights deriving from the registration cannot be enforced (Article 74 (3) Industrial Property Sole Act).
In the event of a non-exclusive licence, the licensee is obliged to expressly undertake to provide goods or services of the same kind as those provided under the same trade mark by the trade mark owner and/or by other licensees (Article 74 (6) Industrial Property Sole Act).
Recordal is not mandatory; however in order to be effective against third parties who have lawfully acquired rights in the trade mark, licence agreements must be recorded with the San Marino Patent and Trademarks Office. There is no time frame for the recordal.
For recordal purposes, the following are required:
a) a notarized and legalized (through Apostille where applicable) licence deed or a certified copy thereof along with a sworn translation into Italian;
b) a Power of Attorney from licensor and from licensee, not legalized;
c) proof of the payment of the prescribed official fees.
Recorded licences are published in the official gazette (Article 74 (1) Industrial Property Sole Act).
The licence will only be enforceable against third parties who in bona fide have acquired rights to the licensed trade mark starting from the recordal of the licence (Article 74 (1) Industrial Property Sole Act).
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee can join the proprietor in infringement proceedings. A registered user can call upon the trade mark owner to institute infringement proceedings. He can institute proceedings in his own name if the licence agreement or the trade mark owner allows him to do so; on the contrary, he will not be able to institute proceedings in his own name if the license agreement does not allow him to do so or if the trade mark owner refuses his request to do so (Article 111 (6) Industrial Property Sole Act). The registered user does not need to cite the owner as co-defendant unless otherwise established between the licensor and licensee.
Licences are not allowed for collective marks (Article 74 (4) Industrial Property Sole Act).
Once opposition proceedings will be operative in San Marino, an exclusive licensee will also be able to file an opposition in its own name before the Patent and Trademark Office (unless the exclusive license agreement would exclude this; Article 66 (4) Industrial Property Sole Act).
We would like to thank the following law firms for their assistance in updating the information provided:
Società Italiana Brevetti S.p.A., Firenze, Italy
Società Italiana Brevetti S.p.A., Firenze, Italy