The trademark is any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, sounds, the shape of goods or their packaging, combinations or tonalities of colors, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
A trademark must comply with the following requirements:
- Distinctive character (Italian Industrial Property Code, art. 13): a trademark must have distinctive character. The following types of trademarks may not be the object of registration:
a. Those consisting only of generic names of products or services or by descriptive indications referring to the same ( by way of example, “scotch” for a scotch drink);
b. Those consisting only of descriptive indications referring to products or services, such as signs which in trade may serve to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the product or of rendering of the service, or other characteristics of the product or service;
c. Those consisting exclusively of signs which have become customary in the current language or in the established practices of trade, like, by way of example, “super”, “extra”, “lusso”.A trademark complies with the requisite of distinctive character if it is composed of words or designs not related to the distinguished product or service. In the end, it is possible to use as a trademark a generic name or a word commonly used but they must be modified or combined in a creative way.
- Truth (Italian Industrial Property Code, art. 14, 1° comma, lett. b): The following shall not be registered as trademarks “signs which are such as to deceive the public, in particular as to the geographical origin, nature, quality of products or services”.
- Novelty (Italian Industrial Property Code, art.12, lett.d): The following shall not be registered as trademarks: signs that, as of the date of filing of the application, are identical with, or similar to, trademarks which have already been registered by others in the Country or having effect in the Country, following filing of an application on an earlier date or having effect starting from an earlier date based on the right of priority or on a valid claim of priority for identical or similar products or services, if because of the identity or similarity between the signs or the identity or affinity between the products or services the likelihood of confusion on the part of the public may arise, which may also consist in the likelihood of association between the two signs.
- Lawfulness (Italian Industrial Property Code, art. 14,1): The following shall not be registered as trademarks:
a) signs contrary to the law, public policy or accepted principles of morality;
b) signs which are such as to deceive the public, in particular as to the geographical origin, nature, quality of products or services;
c) signs the use of which would result in the violation of third party’s copyright, or industrial property right or of other third party’s exclusive rights.
According to a part of article 25 of the Italian industrial Property Code, a trademark is invalid:
- If is any of the obstacles to registration set forth in Article 12 exists (lack of novelty);
- If it conflicts with the provisions set forth in articles 9, 10, 13 (lack of distinctive character), 14 (lack of lawfulness)
The invalidity may also concern only part of the distinguished products/services.