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Italian and European Union trademark assistance for your clients

The Law Firm of Attorney Eva Troiani assists foreign counsel and IP firms in trademark matters before the Italian Patent and Trademark Office (UIBM) and the European Union Intellectual Property Office (EUIPO). We provide direct and tailored support throughout the trademark life cycle, from preliminary searches and filing to opposition proceedings, legal opinions and agreements.

A specialist partner for trademark matters

Trademark
focus

A practice focused
exclusively on trademark
registration, protection and
enforcement.

Direct professional
contact

Each matter is handled
personally by Attorney
Eva Troiani, ensuring
continuity and direct
communication.

Prompt
communication

Clear and timely updates
on deadlines,
developments and any
action required.

Fee
clarity

Published fees for
standard services and
tailored estimates where
the scope depends on the
matter.

Where does your client need assistance?

The jurisdiction is the first and most visible choice.

We assist foreign counsel and IP firms with trademark matters in Italy, providing direct representation and support before the Italian Patent and Trademark Office (UIBM). Select an area below to view the available services, essential requirements, indicative timelines and applicable fees.

Trademark search and registration

Trademark search in Italy

We can carry out a trademark identity search (only for word marks) between trademark applications and registrations with effect in Italy, namely Italian, EU and International trademarks designating Italy.

We can send you the outcomes in about one or two working days from order and payment receipt.

Similarity Search

A similarity trademark search is not compulsory but strongly recommended before proceeding with a trade mark application filing. The search is conducted between Italian and European Union trademark applications and registrations, as well as International Registrations designating Italy.

We can send you our search report in about four or five working days from order and payment receipt.

Prices for trademark search services
for trademarks filed and/or registered in Italy

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
For word marks only: identity search among trademark applications and registrations with effect in Italy, namely Italian, EU and International trademarks designating Italy 0 208 208
Word marks: Similarity search among Italian, EU and International trademarks designating Italy up to three classes 0 728 728
Each additional class from the 4th onwards 0 156 156
Similarity search for figurative trademarks 0 To be done after viewed the image to be searched To be done after viewed the image to be searched

Trademark registration in Italy

Once filed, the application is examined by the Italian Patent and Trademark Office. If an objection to registration is raised it could be necessary to reply to keep the application alive, it depends on the grounds of the objection.

In case no objection is raised or if the objection is overcome, the trade mark is published in the Bulletin. There are three months from the publication date to oppose the trade mark application.

If no opposition is filed, the trademark is granted by the UIBM.

If you entrust the registration of your trademark to our law firm, we kindly ask you to send us the following documents:

  1. Personal details of the applicant, who may be either one (or more) natural or legal persons.
    • If natural person: Name and surname, address and copy of his/her identity card or passport
    • If legal person: company name, registered office, name and position of legal representative (managing director, CEO, etc.). If possible, copy of the Commercial Extract to take note of the company’s data
  2. Sample of trademark in JPG format
  3. List of the products/services to be distinguished by the trademark.

Timeframe for registration: about six/nine months from the application date.

Price Trademark registration in Italy

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Filing application for registration a trademark/service in one class 183 312 495
Each additional class - 34, 26, 60 34 26 60
Sending of trademark publication 0 0 0
Sending of the certificate of registration 0 0 0

Trademark renewal in italy

The application for trademark renewal can be filed as from 12 months before the expiration date.

There is six months grace period after the expiration date.

Prices Trademark renewal in Italy

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Filing a trademark renewal in one class 149 312 461
Each additional class 34 26 60
Sending of the certificate of renewal 0 0 0

Office actions in Italy

The law firm can also offer you assistance with:

  • Reviewing and reporting Notice of grounds of refusal
  • Drafting and filing response (in case of objection on the list of goods and services)
  • Drafting and filing response (in case of objection based on absolute grounds of refusal)

Recordals in Italy

The law firm can also offer you assistance with:

  • Recordal change of name / change of address
  • Recordal of change of ownership

Oppositions and cancellation

Oppositions in Italy

Opposition proceedings start upon receipt of the notice of opposition; after the examination of the admissibility of the opposition, the Office informs the parties of the timing of the proceedings.

There is an initial period granted to the parties to reach an amicable solution (cooling-off period) and it can be extended (for a total of 12 months) by request of both parties.

Once the cooling-off has expired, the opponent has 2 months to submit arguments and evidence, then the applicant has two months to file a reply.

The decision of the Office can be appealed within 60 days of the date of the notification of the decision.

Prices opposition-in services for trademarks in Italy

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Reporting opposition received 0 0 0
Filing a request for an extension to a cooling off period/responding to an extension to a cooling off period 0 0 208
Drafting/filing counterstatement 0 0 936
Filing proof of use if necessary 0 Depending on complexity 208/832 208/832
Forwarding/reporting on any statement in reply 0 0 0

Prices opposition-out services for trademarks in Italy

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Filing notice of opposition 316 416 632
Drafting and filing statement of grounds 0 936 936
Forwarding/reporting response to our submissions 0 0 0
Drafting/filing statement in reply 0 936 936
Reporting the outcome of opposition/invalidity/revocation proceedings 0 0 0

Application for non-use revocation in Italy

The Italian Patent and Trademark Office, having verified the admissibility of the request for revocation, communicates said request to the parties with notice of the right to reach a conciliation agreement within two months from the date of communication, extendable, upon joint request of the parties, up to a maximum of one year.

In the absence of an agreement, the owner of the trademark whose revocation is requested may present his deductions in writing within the period of sixty days from the date od receipt of the communication.

The decision of the Office (acceptance or rejection of the application for revocation) can be appealed within 60 days of the date of the notification of the decision.

Prices for non-use revocation for trademarks in Italy

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Drafting/filing application for non-use revocation 500 (plus duty stamp) 832 1.332 (plus duty stamp)

Application for a declaration of invalidity in Italy

The Italian Patent and Trademark Office, having verified the admissibility of the request for invalidity, ommunicates said request to the parties with notice of the right to reach a conciliation agreement within two months from the date of communication, extendable, upon joint request of the parties, up to a maximum of one year.

In the absence of an agreement, the owner of the trademark whose revocation is requested may present his deductions in writing within the period of sixty days from the date of receipt of the communication.

The decision of the Office (acceptance or rejection of the application for invalidity) can be appealed within 60 days of the date of the notification of the decision.

Prices for declaration of invalidity services for trademarks in Italy

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Filing invalidity proceeding 500 (plus duty stamp) 1.040 1.540 (plus duty stamp)

Legal advice and agreements

Legal Opinions in Italy

We can provide legal opinions regarding trademarks, copyright, unfair competition, coexistence agreements, agreements in the field of intellectual property.

Trademark Assignment and License Agreements in Italy

We can assist you with drafting trademark assignment and trademark license agreements, negotiating specific contractual clauses and filing application for recordal of change of ownership or license

We assist foreign counsel and IP firms with European Union trademark matters, providing direct representation and support before the European Union Intellectual Property Office (EUIPO). Select an area below to view the available services, essential requirements, indicative timelines and applicable fees.

Trademark search and registration

Trademark search in EU

Current EU Regulation provides that the owners of identical or similar trademarks, covering identical or similar goods and/or services, can challenge the use and registration of a subsequent trademark.

As regards the European Union trademark, it has unitary character and effect throughout the EU; as a result, it can be opposed and challenged not only by the owners of earlier EU trademarks, but also by the owners of earlier national trademarks of EU Member States. In other words, the application for a European Union trademark can be opposed and challenged not only because of an earlier European Union trademark but also because of an earlier Spanish, Polish, French etc. trademark.

That’s why in theory it would be necessary to carry out a similarity search also between national trademarks of all the EU Member States; nevertheless, such a search, although abstractly executable, would cause remarkable costs.

I therefore suggest, as a minimum precautionary measure, conducting an identity search for national trademarks across all EU Member States, in addition to a more in-depth similarity search focusing only on specific categories of trademarks (Italian, European Union and international trademarks designating EU) before filing an application for a European Union trademark

Trademark Identity Search

We conduct an identity trademark search (only for word marks) among EU trademarks, national trademarks of the EU Member States and international trademarks designating such territories.
We can send you the outcomes in about one or two working days from order and payment receipt.

Trademark Similarity Search

A trademark search (similarity search) is not compulsory but is strongly recommended before proceeding with a trade mark application filing. The search is conducted among Italian and European Union trademark applications and registrations, as well as International Registrations designating Italy.

We can send you our search report in about four or five working days from order and payment receipt.

Prices for trademark search services
for trademarks filed and/or registered in EU

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
For word marks only: identity search among EU trademarks, national trademarks of the States members of EU and international trademarks designating such territories 0 0 260
Word marks: Similarity search among Italian, EU and International trademarks designating Italy up to three classes 0 728 728
Each additional class from the 4th onwards 0 156 156
Similarity search for figurative trademarks 0 To be done after viewed the image to be To be done after viewed the image to be

Trademark registration in EU

Once filed, the EU trademark application is examined from the EUIPO (European Union Intellectual Property Office). If an objection to registration is raised, it could be necessary to reply in order to keep the application alive.

After the publication, the European Union trademark application may be opposed by an earlier trademark owner within three months from the date of publication.

Timeline

From filing to registration is approximately 4/5 months.

List of requirements for the trademark application filing

  1. Personal details of the applicant, who may be either one or more natural or legal persons. In case of natural person, we need to know his/her name, surname, address (exact place of residence), while in case of legal person we need to know its trade name and address (registered office);
  2. We need to receive a sample of trademark in JPG format, size less than 2 MB;
  3. Indication of the products and/or services which must be identified by the mark.

A POA simple signed by the applicant and sent us by email is sufficient.

Price Trademark registration in EU

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Filing application for registration
a trademark/service in one class		 850 416 1.266
Filing application for registration
a trademark/service in two classes		 900 416 1.316
Each additional class
Claiming Convention priority for an application		 150 52 202
Sending of trademark publication 0 0 0
Sending of the certificate of registration 0 0 0

Trademark renewal in EU

The application for trademark renewal can be filed as from 6 months before the expiration date. There is six months grace period after the expiration date.

Prices Trademark renewal in EU

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Filing a trademark renewal in one class 850 364 1.214
Filing a trademark renewal in two classes 900 364 1.264
Each additional class from the 4th onwards 0 156 156
Each additional class 150 52 202

Prices for Office actions in EU

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Reviewing and reporting Notice of grounds of refusal 0 0 0
Drafting and filing response (in case of objection on the list of goods and services) 0 312 312
Drafting and filing response (in case of objection based on absolute grounds of refusal) 0 832 832

Prices for recordals in EU

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Recordal change of name / change of address 0 260 260
Recordal of change of ownership 0 364 364
Each additional class from the 4th onwards 200 364 564

Oppositions and cancellation

Oppositions in EU

Opposition proceedings start upon receipt of the notice of opposition; after the examination of the admissibility of the opposition, the Office informs the parties of the timing of the proceedings.

There is an initial period granted to the parties to reach an amicable solution (cooling-off period) and it can be extended once by 22 months (for a total of 24 months) by request of both parties.

Once the cooling-off has expired, the opponent has 2 months to submit arguments and evidence, then the applicant has two months to file a reply.
The decision of the Office can be appealed within two months of the date of the notification of the decision

Prices opposition-in services for trademarks in EU

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Reporting opposition received 0 0 0
Filing a request for an extension to a cooling off period/responding to an extension to a cooling off period 0 0 208
Drafting/filing counterstatement 0 0 936
Filing proof of use if necessary 0 Depending on complexity 208/832 208/832
Forwarding/reporting on any statement in reply 0 0 0

Prices opposition-out services for trademarks in EU

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Filing notice of opposition 320 416 736
Drafting and filing statement of grounds 0 936 936
Forwarding/reporting response to our submissions 0 0 0
Drafting/filing statement in reply 0 936 936
Reporting the outcome of opposition/invalidity/revocation proceedings 0 0 0

Application for non-use revocation in EU

In case of an application for revocation for non-use, the Office invites the proprietor of the contested EU trade mark to provide proof of genuine use of the mark or proper reasons for non-use, within a specific period.

If the owner does not provide any evidence of genuine use or the evidence is insufficient, the EU trade mark is revoked.

If the evidence is received by the Office, it is forwarded to the applicant who can file observations in reply in the time limit fixed by the Office. If no observations are filed, the Office can issue the decision.

There are usually two rounds of observations, after which the adversarial part is closed and the file is ready for a decision.

The decision of the Office can be appealed within two months of the date of the notification of the decision.

Prices for non-use revocation for trademarks in EU

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Drafting/filing application for non-use revocation 630 832 1.462

Application for a declaration of invalidity in EU

Application for a declaration of invalidity can be based on absolute grounds or relative grounds.

The notification of the application to the EUTM proprietor will contain an invitation to submit observations

In case of application of revocation based on absolute grounds the applicant must submit facts, arguments and evidence to support the grounds on which the opposition is based.

In case of application for revocation based on relative grounds the applicant must prove the existence, validity and scope of protection of the earlier rights invoked.

There are usually two rounds of observations, after which the adversarial part is closed and the file is ready for a decision.

The decision of the Office can be appealed within two months of the date of the notification of the decision.

Prices for declaration of invalidity services for trademarks in EU

Item Official Fee (EUR) Attorney Fee (EUR) Total Fee
Filing invalidity proceeding 630 1.040 1.670

Legal advice and agreements

Legal Opinions in EU

We can provide legal opinions regarding trademarks, copyright, unfair competition, coexistence agreements, agreements in the field of intellectual property.

Trademark Assignment and License Agreements in EU

We can assist you with drafting trademark assignment and trademark license agreements, negotiating specific contractual clauses and filing application for recordal of change of ownership or license.

Representation to Italian Courts

The Firm provides specialised assistance in intellectual and industrial property law with extensive expertise in the protection of patents, trademarks, designs, geographical indications, trade secrets, and copyrights.

The Firm services are mainly directed at leading companies in the fields of mechanics, chemistry and pharmaceuticals, fashion and design, food and beverage, electronics, and information and communication technology.

We have expertise for high-profile national and international disputes in the following areas:

Patents

We defend patent rights:

  • Before all Italian and foreign courts, leveraging our international network.
  • Across all industrial sectors, achieving significant economic results for our clients, in terms of market share and royalties.

We also handle non-contentious matters, including:

  • Conducting infringement analysis.
  • Valuation of corporate assets and related agreements for transfer and exploitation.
  • Due diligence on patent portfolios in the context of mergers and acquisitions.

Trademarks

We assist our Clients in both contentious and non-contentious matters, from drafting licensing and distribution agreements to addressing infringement issues. The team also specializes in innovative topics such as selective distribution and online counterfeiting.

Designs

We assist Italian and international designers operating in various industries, such as fashion and luxury furniture, offering advice on a broad range of contracts that protect design in all its aspects.

Trade Secrets

We assist companies in protecting industrial know-how. Specifically, in contentious matters, we handle disputes concerning:

  • Imitation of industrial designs.
  • Misappropriation or unlawful use of confidential business information.
  • Exploitation of knowledge acquired by former employees during prior employment relationships.
  • In non-contentious matters, we support Clients in drafting confidentiality agreements and contracts to protect their technological and commercial assets.

Copyright

We provide legal assistance in both contentious and non-contentious matters related to the protection of intellectual works, with a focus on software, literary, musical, photographic, design.

Made in Italy

We offer assistance in:

  • Enhancing and protecting the "Made in Italy" designation.
  • Food product labeling and traceability.
  • Geographical indications and designations of origin.

Unfair Competition

We provide legal support in disputes involving breaches of competition rules and principles of professional fairness, including:

  • Slavish imitation.
  • Confusing practices.
  • Denigration.
  • Solicitation of employees.
  • Boycotting, dumping, parasitic competition.
  • "Italian sounding" practices in food law.
  • Appropriation of merits

How we work with foreign associates

1. Instructions

You send the available
matter details.

2. Review

We identify missing
information and risks.

3. Scope and fees

We confirm work, charges
and timing.

4. Reporting

We handle the matter and
keep you updated

Do you need assistance with a trademark matter?

Select the relevant jurisdiction and area of assistance, then briefly describe your request. Attorney Eva Troiani will contact you directly to discuss the matter.

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