Italy

Economies are battered but many major offices set for record trademark numbers

As the data continues to be updated, we are able to get a better understanding of the extent of the coronavirus’ impact on the trademark ecosystem.

Economies are battered but many major offices set for record trademark numbers
Manchester United crowned champions of trademarks Premier League; Messi tops player ranking
30 Jul 2020

Manchester United crowned champions of trademarks Premier League; Messi tops player ranking

New research conducted by WTR can once again reveal that Manchester United has the biggest trademark portfolio of any global football club by a wide margin.

Ferrari partially loses iconic mark as EUIPO’s non-use requirement claims latest victim
9 Jul 2020

Ferrari partially loses iconic mark as EUIPO’s non-use requirement claims latest victim

Just 39 250 GTOs were built between 1962 and 1964, opening the brand up to a non-use opposition at the EUIPO.

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8 Jul 2020

Coop trademark decision highlights power of the pan-European dynamic injunction

A dynamic injunction issued by Italy’s Court of Bologna shines the spotlight on this invaluable IP weapon. Read more

2 Jul 2020

Why pan-European dynamic injunctions could be vital in trademark fights

An order issued by Italy’s Court of Bologna shines the spotlight on this invaluable IP weapon and why it should be a part of every rights holder’s arsenal Read more

23 Apr 2020

Procedures and strategies for anti-counterfeiting: Italy

In the case of infringement, police investigations, undercover operations and seizure measures are available. Read more

30 Mar 2020

Italy Trademark Attorney  Firm of the Year: Barzanò & Zanardo

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Anti-Counterfeiting

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25 Feb 2020

International Anti-counterfeiting Coalition relocates annual conference to Rome; WIPO election heats up; BlackBerry dispute – news digest

In our latest round-up, we look at unauthorised SUSSEX ROYAL trademark applications being filed across the globe, PepsiCo purchasing a Chinese snack brand, the USPTO giving an update on its engagement efforts, and much more. Read more

11 Feb 2020

USPTO protest letter passes 80 signatories; KIPO face mask warning; Inter Milan scores win – news digest

In our latest round-up, we look at the Benelux IP Office adding its trademark image data to the EUIPO’s TMview platform, Greece being identified as a transit point for counterfeit cosmetics, and much more. Read more

6 Dec 2019

Turkey implements plain packaging, Trump trademark spike, and INTA awareness call: news digest

In our latest edition, we look at the resolution of a trademark dispute between the Ramone family, brand loyalty rising, a vegan butcher taking on Nestlé at the USPTO, and much more. Read more

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

Brand management

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8 Aug 2019

Dybala image rights issue highlights growing importance of intellectual property to sports stars

The issue of personal image rights has reportedly become a stumbling block for at least two transfer negotiations involving football star Paulo Dybala. Such issues could become an increasingly common roadblock to transfers in the future. Read more

7 Aug 2019

Despite backlash, Ferrari may benefit from its spat with designer Philipp Plein

This week, a dispute between Philipp Plein and Ferrari went public after the German fashion designer posted a cease and desist letter on social media. While online criticism has ensued, this could be to the advantage of the Italian company. Read more

29 Jul 2019

The top filers and a vision for the future: inside EUIPO operations

Less than a year into Christian Archambeau’s tenure as executive director, the EUIPO is laying the groundwork for future expansion. World Trademark Review’s annual focus on the office assesses current operations, reveals the most proactive filers and explores how the agency is taking a global view of trademarks. Read more

26 Apr 2019

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. Read more

Enforcement and Litigation

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2 Aug 2019

Court of Milan protects Sisley against unauthorised marketing of products by Amazon

The Company and IP Specialised Division of the Court of Milan has recognised the validity of Sisley’s selective distribution network and ordered Amazon, which is not part of Sisley’s network, to end its marketing of Sisley products. 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

Government/Policy

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9 Mar 2020

Why the Italian government’s draft bill on ambush marketing does not go far enough

In January, the Italian government approved a draft bill aimed at regulating ambush marketing. However, in this guest analysis, Cesare Galli, founding partner of IP Law Galli, calls for the Italian Parliament to go further. Read more

6 Sep 2019

New law creates protection for historical trademarks but fails to define key measures

A new law that introduced enhanced protection for Italian-sounding terms, as well as a new category for historical trademarks of national interest, risks alienating foreign investors and conflicting with the Italian Constitution, as well as EU law, due to a lack of definition. Read more

18 Jul 2019

New regulations on brands that evoke Italy or are linked to Italian territory

The so-called ‘Growth Decree’, which aims to encourage economic growth, contains certain provisions relating to IP rights. In particular, it regulates the adoption of distinctive signs that evoke Italy and, more generally, of trademarks linked to the Italian territory. Read more

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. Read more

Law Firms

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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.

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7 Jul 2016

Barcelona and Neymar top football trademark rankings; high-flying Leicester need to shore up their defence

Research conducted by <i>World Trademark Review</i> reveals the leading trademark filers in the football world, with FC Barcelona, AC Milan and Manchester United topping the list. It also demonstrates that Leicester City – a team that shocked the football fraternity by winning the Premier League title two months ago – do not yet have a trademark portfolio that matches its newfound success; although a club spokesperson tells us that it has plans to change that.

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IP Offices

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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

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

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.

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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

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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

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15 Feb 2016

Protection of trademarks against use as keyword is relative

A recent Court of Milan decision confirms that the protection of trademarks against third-party use as keywords is always relative, never absolute. However, such use must never mislead consumers about the origin of the products or services or suggest an association between the trademark owner and the advertiser.

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24 Nov 2015

Bologna Court orders defendant to cancel domain name registration and remove any link to that domain name

The Specialised IP Division of the Court of Bologna has issued a preliminary injunction enjoining a hotel from using the sign Hotel Ink 124 and the domain name 'www.hotelink124.it&#039;, as these were confusingly similar to the earlier registered mark INC HOTEL, owned by an Italian chain of hotels. The decision is remarkable in that the defendant must not only cancel the domain name registration, but also remove any link to that domain name on other websites.

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Portfolio Management

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14 Jan 2020

Infringement and filings increase but budget no longer the primary concern, says new study

As trademark filing numbers increase globally, a new report by CompuMark provides data on a rise in infringement incidents that trademark professionals are experiencing. While these infringements are costly, budget does not currently top the list of concerns for in-house teams. 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

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.

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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.

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Trademark law

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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

20 Jul 2018

Well-known marks: approaches to fame in Europe

Obtaining well-known status for a trademark can be a powerful tool for rights holders. In the third of a three part series, this article considers the best route in key European jurisdictions 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

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

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