Understanding intellectual property (IP) rights and how they apply to your business is essential, but it can be challenging. Here are the key pieces of information to get started along with an introduction to IP law, trademark registration and Registered Community Design (RCD) in Italy. 

1. Intellectual Property in Italy: Definition and Statistics

What is intellectual property? 

Intellectual property (IP) is when a person or entity claims legal ownership of a specific design or idea. Intellectual property law refers to the rights given to the owner of the IP. Generally, this type of property is an intangible asset, such as an invention, a literary or artistic work, a design, a name or an image.

IP can be easily differentiated from other property types by its lack of physical attributes. For example, a person may own an original painting produced by an artist. However, if they do not own the IP for the painting, they are not allowed to make or sell copies of it, since they only own the physical painting, not the original idea.

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What are the types of IP?

Patent

A patent refers to the IP rights given to the owner of an invention (Citazione 3). This enables the owner to prevent others from making, selling, using, importing and/or exporting a good or service that is based on the invention. There are three types of patents that can be granted:

Utility – machines, products, processes or chemicals. It may also be granted for improvements to inventions. This is the most common patent.

Design – forms, objects, patterns, configurations, and other visual appearance characteristics. This only protects visual, not functional aspects of an invention.

Plants – invention or production of new plant species or varieties.

Patent applications and in force have been steadily increasing in Italy over the past decade. The number of applications from abroad has increased by over 50% and the number granted has doubled during the same time, showing increased success for foreign applicants. This can be attributed to the growing desire for foreign investment in Italy as government agencies and IP attorneys continue to equip themselves to help foreign entities through the patent application process.

Trademark

A trademark is a word, symbol, phrase or design that provides a distinguishing characteristic to a good. Trademarks are used to protect creative brand assets, such as product names, but they are also important to help the consumer to identify a good as authentic.

The term trademark is also used to refer to service marks, which specifically deal with characteristics that identify the source of a service. Some examples of trademarks and service marks include logos, slogans or brand names.

According to the WIPO, the number of filings for trademarks in Italy has nearly doubled over the past 10 years. This has made it particularly challenging for applicants as the classification system has also grown significantly, which means applications require strong knowledge of the relevant classes pertaining to a particular trademark or set of trademarks.

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Copyright

A copyright refers to the original work of an artist, author or composer. These works are usually creative, such as art, literature, and songs. However, it also includes original technology, such as software code. It is more difficult to receive a copyright than other types of IP rights as it must be proven that the work is original and artistic in nature.

Copyrighted works are protected for the lifetime of the original creator, plus 70 years after their death. If the work was created anonymously, the right expires 95 years after the initial publication date or 120 years after it was created, depending on which is the shortest period of time.

Trade Secrets

A trade secret is confidential information that provides a business with a competitive edge in its industry. It is generally considered as a manufacturing, industrial or commercial asset. Some examples of trade secrets are sales and distribution methods, marketing strategies, supplier and clients lists, buyer personas, and manufacturing processes.

Trade secrets may have an unlimited period of protection. However, it can be more difficult to obtain protection for them as they must comply with strict standards and some of these can vary between different countries. A local IP attorney will be able to provide better insights into what is required for a specific country or region.

One of the main differences between intellectual property law in Italy and other countries is the level of protection for different forms of IP. For instance, protection for trade secrets has always been strong for IP holders in Italy. Given its history in artisanal industries, Italian law has provided the highest levels of trade secret protection for artists and creators.

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2. The Challenges of Registering and Protecting Trademarks and Patents in Italy from Abroad

Trademark Classifications

Since 2009, the number of classes specified in trademark filings has increased significantly in Italy. Trademark registrations in Italy for 2018 specified almost 970,000 different classes (Citazione 2), while trademark applications specified just over 860,000 classes. Understanding the trademark classification system is one of the main challenges in searches and registrations for trademarks in Italy from abroad.

The Nice Classification is mandatory for national and international trademark registrations in Italy. It was first established in 1957 and it has been adopted as an international system for classifying goods and services, specifically for registering marks. While it is widely known and used, it is complex to understand how it works, so you should consult with a trademark attorney that has experience in trademark searches and registrations.

 

Filing and Enforcing a Patent in Italy

The most important consideration to bear in mind is that businesses who do not have a principal address in Europe are required to have a European Patent Attorney represent them throughout the application for a European patent. It is equally crucial to choose a partner that understands the local intellectual property laws in Italy and internationally. Using an IP attorney networked with the relevant institutions and offices in the European Union is vital to ensure that a patent application is properly processed and subsequently enforced.

3. Italian Legislation on Intellectual Property 

In Italy, the law on trade secrets is generally viewed as one of the most efficient in Europe. When the EU introduced the Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure on June 8, 2016, Italy was already ahead of many of its European counterparts since it already provided many of the outlined protections

As previously mentioned, Italy follows directives and classifications that are outlined by the European Patent Office, such as the International Patent Classification (IPC) for patents and utility models and the Locarno Classification for industrial designs. It also follows the provisions for standards, enforcement and dispute settlements as outlined in the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights). These are viewed as general international standards, so it is advisable to consult with a local IP attorney to understand what is and is not covered by these classifications, directives, and agreements. 

4. Institutions and Offices

The main institution for dealing with applications and filings in Italy is the Italian Patents and Trademarks Office, which provides all information related to applications for patents, trademarks, and designs in Italy. This includes any required forms or fees during the process. While the website provides some information in English, it is not fully comprehensive. Some information may only be available in Italian and other information may only available through contacts in the office. Local IP firms, especially those with offices in Rome, maintain daily face-to-face contact with the office to remain informed with the most recent information.

The Directorate General for the Fight Against Counterfeiting is an administrative arm of the Italian Patent and Trademark Office that works to prevent the counterfeiting of goods. It operates nationally and internationally to develop anti-counterfeiting methods against online and offline counterfeit merchants.

intellectual property institutions and offices

Espacenet is a free-to-access database of over 100 million patents providing information to conduct research in Europe, the US and many other international locations. It has been developed in cooperation with the European Patent Office. However, this Italian website is only available in Italian and does not always provide full patent texts.

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5. The Importance of Choosing an Italian Attorney: J&P’s Case History

Jacobacci & Partners was established over 140 years ago and they have since become the leading providers of patent lawyers and trademark attorneys in Italy. For the past 8 years in a row, they have been recognized as one of the “World’s Leading Professionals” as a “Highly Recommended IP Firm” by the World Trademark Review. Managing Intellectual Property (MIP) has also ranked Jacobacci & Partners as a top tier firm for managing patents and trademarks in Italy.

The team has worked with over 10,000 clients in multiple industries and business sizes. They have managed over 100,000 patents and 100,000 trademarks for over half of the 100 top brands in the world. Over 55% of Jacobacci & Partners’ clients are based outside Italy, so many of their patent lawyers and trademark attorneys are equipped to deal with IP management requirements in the global market. They also provide top tier local support for Italy with access to a network of local contacts and resources that deliver best-in-class results for their clients.

6. A Focus on Registered Community Design

A Registered Community Design (RCD) is the exclusive industrial design right to use a visual design within the European Union. The design can be the shape, configuration or composition of a 2D or 3D object and it must be novel or unique. In comparison with a design registration, an unregistered design provides many of the same rights, but only for up to 3 years from publication in the Community. This is usually employed by the owners of IP with short lifespans.

In Italy, a design registration is filed with the EU International Patent Office (EUIPO). An IP attorney can provide guidance on the requirements for the application and they can also help to expedite the process. RCD renewals are every 5 years with a maximum total term of 25 years. 

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