Registering a trademark in Italy

How to register a trademark

No one is obliged to be assisted by an attorney for the filing of a trademark in Italy. Often, however, those who proceed on their own underestimate the importance of defining a correct filing strategy, aimed at reducing the risks of challenge, making the trademark as protectable as possible and facilitating its extension abroad, with optimised costs.

A trademark, in fact, in order to be validly registered and therefore protected over time, must have certain requirements that those who proceed on their own often overlook, which is why it is easy to end up holding registrations liable to be invalidated or limited in the event of a challenge. Moreover, a trademark can be registered in word, figurative, combined, colour or greyscale form, etc. and each choice has its pros and cons.

Finally, even the choice of the goods and/or services to be protected is not as straightforward as it seems, and varies according to the type of business and the holder's prospects, given that "defensive" filings also exist. In the event of a subsequent extension abroad, a classification that is not entirely correct can lead to refusals or additional costs.

For all these reasons, it is always advisable to rely on a consultancy firm such as BIESSE to define from the outset the best strategy for registering your trademark, because it is better to spend something at the start and set off on the right foot rather than later having to bear the costs of litigation and/or oppositions and/or invalidity of your trademark.

How to file a trademark – procedure for registering an Italian trademark

The standard procedure for registering a trademark is normally divided into four phases:

  • filing of the application;
  • examination (formal only);
  • publication;
  • registration;
  • in the event of a refusal (provisional or partial), or a challenge by third parties, any so-called reply, appeal or opposition phases may be opened.

In Italy, trademark registrations are granted without a prior examination of earlier rights; they are therefore always subject to the risk of possible oppositions and/or invalidity actions by third parties, since the existence of identical or similar earlier trademarks, designs, copyrights, domain names, business and/or company names, used or filed for identical or similar goods, may invalidate the registration and/or use of a subsequent trademark.

Registration of a trademark may also be refused if the trademark is deemed to lack distinctive character, that is, if it consists exclusively of wordings or logos that have become common in current language or in the constant practices of trade, or if it is made up exclusively of generic denominations of goods or services or of descriptive indications referring to them (type, intended purpose, quality, etc.). Refusals may also be based on unlawfulness and/or interference with other bodies of rules, such as those governing DOC, PGI, etc.

Any foreign country may refuse the registration of a trademark, even if it has already been accepted in Italy or in other countries.

The Italian trademark is valid for ten years and can be renewed indefinitely for further ten-year periods.

Finally, since the UIBM does not carry out an examination of earlier rights, it is advisable to activate a watch service on your trademark, in order to intervene promptly in the event of subsequent filings of confusingly similar trademarks.

How much it costs to register an Italian trademark

The cost of filing a trademark – and of subsequent renewals – depends on the number of classes claimed, according to the Nice Classification, and on the type of filing, electronic or at the Chambers of Commerce (CCIAA).

On the UIBM website it is possible to view the fees in force (Italian trademark registration fees), which include:
1. Filing and government concession fees to be paid via an F24 form or the PagoPA system;
2. Stamp duties to be applied to certain documents where required;
3. Secretarial fees to be paid by deposit to the CCIAA where the filing is made.



On top of the filing fees, the fees of a lawyer or trademark attorney for advisory services must be added, which may include:
- the preliminary analysis of the trademark's registrability
- the search and assessment of prior rights
- the selection of the classes of services and/or goods for which the trademark is to be registered
- the definition of the territorial scope of protection
- the filing activities and uploading into the deadline management system
- the response to any objections from the office at the time of registration
- assistance in the event of oppositions or invalidity actions
- the drafting of coexistence agreements