Italy

Trademark Premier League: Manchester United crowned 2019 champions, as Messi pulls ahead of Neymar

With today’s World Intellectual Property Day celebrating the importance of IP in sports, research conducted by WTR finds that Manchester United has the most significant trademark portfolio of any global football club. 

Trademark Premier League: Manchester United crowned 2019 champions, as Messi pulls ahead of Neymar
17 Apr 2019

Speediest trademark examination in the world? Italy fast-track system sees publication in just two days

The Italian Trademark and Patent Office recently introduced a fast-track system for the examination of Italian trademark applications, with one expert claiming it could be the quickest trademark examination process in the world. 

24 Aug 2018

A-Z guide of EU trademark court practice and performance: Ireland to Lithuania

In the third of our five-part series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the last two years.

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14 May 2019

Procedures and strategies for anti-counterfeiting: Italy

As an EU member state, Italy applies all the relevant EU regulations (including those on border measures) and has implemented the Agreement on Trade-Related Aspects of Intellectual Property Rights and the main international agreements in this field.  Read more

12 Apr 2019

Italy implements EU Trademarks Directive and further strengthens trademark protection

Legislative Decree 15/2019, which implements the EU Trademarks Directive (2015/2436), entered into force on 23 March 2019. This update reviews the main novelties that mark owners and practitioners should be aware of. Read more

14 Mar 2019

Online brand enforcement in Italy: urgent remedies, ISP liability and arbitration

Online trademark infringement disputes in Italy are handled by the specialised judges of the IP courts, which are based in all Italian regions with the exception of Valle d’Aosta. The specialised IP courts are highly efficient, particularly in Milan and Turin, and generally allow trademark owners to obtain sound protection in a matter of a few weeks. Read more

25 Feb 2019

All in the name: 101 ways to avoid having a weak mark

Until recently, Italian banks traditionally had highly descriptive names but fell victim to the inherent weakness of those names as trademarks. Banks are now seeking more distinctive names to improve their image and strengthen their brand. Read more

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Anti-counterfeiting

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24 May 2018

Procedures and strategies for anti-counterfeiting: Italy

Contrary to common belief, the Italian legislative instruments against IP infringement are quite effective. Read more

11 Apr 2018

Customs concerns: counsel identify significant room for improvement in India, Iran and Turkey

Trademark counsel have had their say on the efficiency of customs authorities across the globe – with some of the largest importers of counterfeit goods giving cause for continued concern. Read more

18 May 2017

Procedures and strategies for anti-counterfeiting: Italy

Contrary to common belief, the Italian legislative instruments against IP infringement are quite efficient. In 2003 specialised IP divisions were set up in 12 existing courts, and in September 2012 these were increased to 21. These divisions have exclusive competence to decide civil actions relating to trademarks, patents, copyright and unfair competition. Read more

1 Jan 2017

Italy: Anti-counterfeiting raid nets organised criminals

A major operation organised by the Naples tax police in April 2016 resulted in 53 pre-trial detention orders against members of the Camorra – highlighting the concrete links between counterfeiting and organised crime Read more

Brand management

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11 Jul 2018

Cristiano Ronaldo to Juventus, LeBron James to LA Lakers: the brand perspective on major sporting moves

​​​​​​​The last week has seen NBA legend LeBron James and football superstar Cristiano Ronaldo signing lucrative new deals. Experts say that the strong commercial brand of both players will justify the big dollars being spent. Read more

29 Jun 2018

Legal fakes and the shopping experience – Italy’s fashion challenges

Some so-called ‘legal fakes’ in Italy have so successfully fooled consumers and won over luxury and fashion brand fans that they have essentially supplanted the original brands, which are yet to conquer the country. Read more

1 May 2018

Licensing in Italy: how to prove a non-written agreement

Trademark licensing is recognised under Italian law despite the absence of specific legislation governing agreements. When it comes to enforcement, licensees can provide evidence of a non-written agreement through various means. Read more

1 Aug 2017

Trademarks come out of the Italian Patent Box

Article 56 of Decree Law 50/2017 has removed trademarks from the list of IP rights which may benefit from the package of fiscal incentives known as the ‘Patent Box’, and has also limited the access to know-how, albeit providing for a transitional period for those companies which have already exercised the three-year option to take advantage of the incentives. Read more

Enforcement and litigation

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14 May 2019

Procedures and strategies for anti-counterfeiting: Italy

As an EU member state, Italy applies all the relevant EU regulations (including those on border measures) and has implemented the Agreement on Trade-Related Aspects of Intellectual Property Rights and the main international agreements in this field.  Read more

12 Apr 2019

Italy implements EU Trademarks Directive and further strengthens trademark protection

Legislative Decree 15/2019, which implements the EU Trademarks Directive (2015/2436), entered into force on 23 March 2019. This update reviews the main novelties that mark owners and practitioners should be aware of. Read more

14 Mar 2019

Online brand enforcement in Italy: urgent remedies, ISP liability and arbitration

Online trademark infringement disputes in Italy are handled by the specialised judges of the IP courts, which are based in all Italian regions with the exception of Valle d’Aosta. The specialised IP courts are highly efficient, particularly in Milan and Turin, and generally allow trademark owners to obtain sound protection in a matter of a few weeks. Read more

25 Feb 2019

All in the name: 101 ways to avoid having a weak mark

Until recently, Italian banks traditionally had highly descriptive names but fell victim to the inherent weakness of those names as trademarks. Banks are now seeking more distinctive names to improve their image and strengthen their brand. Read more

Goverment/policy

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20 Apr 2018

With a fast-improving IP office and flourishing brands, Italy’s outlook is bright: exclusive data analysis

Our latest country data report focuses on the branding landscape of Italy. We explore key filing data and the performance of the leading Italian brands, revealing that their total brand value has increased at a quicker rate than that of the top global players. Read more

IP offices

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6 Apr 2018

Trademark offices prepare for the future as users give poor performance grades

The performance levels of the Chinese, Brazilian and Indian trademark offices have clear room for improvement but change could be afoot. Read more

1 Mar 2018

Navigating the idiosyncrasies of the Italian filing system

The Italian Patent and Trademark Office has made significant steps towards improvement over the past 10 years. However, foreign rights holders should be aware of the system’s various quirks. Read more

20 Feb 2018

Pushing the boundaries – identifying the world’s most innovative IP offices

In a new multi-part series, World Trademark Review identifies the IP offices leading the way in offering innovative non-core tools and services – and the registries trailing behind. Read more

31 Jan 2017

Italian government launches multi-million euro allowance to support ‘historical trademarks’

The Italian Patent and Trademark Office has launched a tender for granting funds to support the “revival and economic exploitation” of Italian brands deemed to “represent a piece of history”. One commentator tells World Trademark Review that the move is “significant”, but questions whether certain parts of the fund will be necessary for companies that have been trading for over 50 years. Read more

Online

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1 Jan 2018

Italy: Do we need a vaccine against influencers?

The popular practice of online personalities endorsing products for economic benefit has finally permeated the legal sphere – brand owners should be prepared to pull the plug on misleading ads Read more

1 Mar 2017

Italy: Alternative dispute resolution proceedings involving ‘.it’ domain names in 2016

There are now over 3 million ‘.it’ domain names, making it vital that disputes be resolved swiftly and cost effectively. A review of cases decided last year provides a snapshot of case law in this area Read more

Portfolio management

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11 Jul 2018

Cristiano Ronaldo to Juventus, LeBron James to LA Lakers: the brand perspective on major sporting moves

​​​​​​​The last week has seen NBA legend LeBron James and football superstar Cristiano Ronaldo signing lucrative new deals. Experts say that the strong commercial brand of both players will justify the big dollars being spent. Read more

29 Jun 2018

Legal fakes and the shopping experience – Italy’s fashion challenges

Some so-called ‘legal fakes’ in Italy have so successfully fooled consumers and won over luxury and fashion brand fans that they have essentially supplanted the original brands, which are yet to conquer the country. Read more

1 May 2018

Licensing in Italy: how to prove a non-written agreement

Trademark licensing is recognised under Italian law despite the absence of specific legislation governing agreements. When it comes to enforcement, licensees can provide evidence of a non-written agreement through various means. Read more

11 Dec 2017

Effective use of Community design protection

Design protection has taken on an increasingly important role in recent years, since appearance and exterior shape now play a fundamental role in the success of a product. Designs are now relevant to a wide range of products involving industry, fashion and crafts, and must be protected accordingly in order to guarantee the creator’s moral and financial benefits. Read more

Trademark law

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25 Dec 2018

A call for change – trademark protection in Italy looks set to transform

There is a need for change in Italy’s IP sector thanks to attempts to harmonise the national trademark regulations of EU member states and the global increase in technological innovation and online activity. Read more

29 Oct 2018

Enforcement in Italy: legal peculiarities and effectiveness of IP protection

There are advantages to protecting IP rights in Italy, including the possibility of starting legal action before registration has been granted in one of the 22 specialised courts across the country. Read more

12 Sep 2018

Trademark procedures and strategies: Italy

Italy has a first-to-file system, therefore unregistered trademarks enjoy a lesser degree of protection than registered trademarks. Only in exceptional circumstances can an unregistered trademark prevail over a later registered trademark. Read more

29 Aug 2018

Keeping it fresh: Italy’s new approach to distinctive signs

Although branding companies and professionals have embraced the concept of fluid trademarks, it remains a highly complex field requiring close cooperation between IP attorneys and brand owners. Read more

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