Intellectual Property in Italy
Foreign investors who have opened a company in Italy and who are interested in a bargain in the country should first consider protecting their own business ideas, as good ideas gain value only if legally attributable to a specific individual. That is the reason why we want to provide you with a guide on the matter.
Firsts thing first: what is Intellectual Property?
Intellectual property (IP) consists of products, work or processes that has been created, which are able to grant their producers/designers a competitive advantage.
We can classify IP into 3 subcategories:
- Industrial property: inventions (patents), trademarks, industrial designs, new varieties of plants and geographic indications of origin;
- Artistic work protected by copyright: original literary and artistic works, music, television broadcasting, software, databases, architectural designs, advertising creations and multimedia;
- Commercial strategies: trade secrets, know-how, confidentiality agreements, etc.
The legal context governing IP in Italy relates mainly to provisions regulated by the Italian Civil Code and the Industrial Property Code, which have incorporated the major legislative elements from the European and International legislation. Namely, the Italian Civil Code contains rules related to trademarks, patents, inventions, models, designs etc., and the way in which they can be used or sold.
Moreover, Intellectual Property Rights (IPR) can as well be protected according to the provisions laid down by the World Intellectual Property Organisation (WIPO).
The form of protection varies however depending on the type of IP:
Italian legislation refers to patent as the right of a person– creator of the innovative product – to produce the respective product and commercialize it on the local and/or international markets. Having granted a patented right is the only legal way for a new product – regardless a machinery, device, product for general use, etc. – to find protection against infringements of third parties. Basically, patents prevent third parties from making, using or selling an invention for a certain period depending on the specific type.
Trademark, under Italian law, is any distinctive element of a product or service, which represents the company that manufactures and sells it. When registered, a trademark obtains protection by the law against any form of usage without the consent of the owner; therefore, it safeguards the product by preventing other business from selling it under the same name.
The registration has a validity of ten years, however a renewal is possible for the same period whenever the owner prefers.
We highly recommend investors who are considering establishing their business presence on the Italian market to carefully verify the existing trademarks, as they should represent their company by choosing a distinctive trademark, in order to help the company itself to be well recognized on the local market.
The main authority to deals with the registration of a trademark in Italy is the Italian Patents and Trademarks Office, which can surely provide you all the information needed on pre-existing trademarks already registered in the country.
Obviously, when the investor is the owner of a national trademark, the validity of the registration can be extended for as usage abroad, in countries that have signed international agreements related to IPR.
Last type of IPR is copyright, which refers to the fact that a legal entity in Italy is allowed to use and distribute a certain intellectual property, namely it informs others that an author intends to control the production, distribution, display or performance of his work. Copyright is granted automatically, with no need for formal registration, which means that authors can start using the copyright symbol immediately.
Please notice that many European countries are part of the Berne Convention for protecting the copyright on their territories.
IPRs are still for the most part protected by national rather than EU laws. This premise implies that a defending IPR in each individual EU country can be complicated and costly; however, investors can easily save money and time by protecting their intellectual property at EU level. While the request for assistance is national, requests deposited in one EU country may be granted the same legal status in all EU countries.
Hence, a European Union trademark and a registered Community design provides, in the 28 Member States of the EU in one single registration, all the necessary protection to anybody who does business in more than one EU country. All that is needed is the registration of a trademark or design in any of 23 EU languages with a single application at the European Union Intellectual Property Office (EUIPO). An online application costs € 850 for a trademark and € 350 for a Community design.
Generally speaking, it is possible to request an application for a national patent at any Patent Office in an EU country or for a European patent through the European Patent Office (EPO). When obtained however, a European patent always requires the validation by the specific national patent office in each country where protection is required. Costs will therefore depend on country’s legislation, and translation or the payment of some precise fees may have to be due. Info on costs and procedures are available in each of the 30 IP Offices present in every Member-State.
Counterfeiting – unauthorised imitation of a branded good – and piracy – unauthorised copying of an item covered by an intellectual property right – are the front line of defence for IPR for the European legislator. Protection against counterfeiting or piracy can be obtained filing a request to detain goods suspected of infringing IPR by lodging an application for action with the competent national customs authorities.
As for the more specific aspect that concerns Italian legislation, investors who have any doubt or face any type of problem with regard to the use of IPR in Italy, can directly address to the local Italian Patent and Trademark Office, managed by the territorial competent Chamber of Commerce. Our team of lawyers can assist you in this process.
If you need further information or legal assistance for intellectual property rights issues, you may contact our Italian lawyers for legal advice about your individual situation. Kenton & Miles can provide you the help needed through our skilled, English-speaking professionals, and represent you in front of Italian courts, with services, tailored according to your needs, drawing on decades of experience in the field of Corporate & Commercial.
Article written by Daniela Mya Pacino, to make contact with the Corporate team please make contact here.