意大利

Chapter I
Rights in Trademarks

Art. 1.

1. The rights of a proprietor of a registered trademark shall consist in the faculty of making exclusive use of the mark. The proprietor shall have the right to prohibit other persons, not having his authorization, from using:

(a)

a sign identical with or similar to the registered mark, for identical or related goods or services if, due to the fact that the signs are identical or similar and the goods or services are identical or related, there exists a likelihood of confusion on the part of the public, which may also consist in a likelihood of association between the two signs;

(b)

a sign identical with or similar to a mark registered for goods or services that are not related, if the registered mark enjoys repute in the State and if use of the sign without due cause takes unfair advantage of or is detrimental to the distinctive character or the repute of the mark.

2. In the cases referred to in items (a) and (b) of paragraph 1, the proprietor of the mark may, in particular, prohibit other persons from affixing the sign to the goods or their packaging; from offering the goods, from putting them on the market or from stocking them for such purposes, or from offering or supplying services under the sign; from importing or exporting the goods under the sign, from using the sign on business papers and in advertising.

* Italian title: Testo delle disposizioni legislative in materia di marchi registrati.
Entry into force (of last amending Decree): December 31, 1992.
Source: Communication from the Italian authorities, and in English, from Società Italiana Brevetti, Rome, Italy.
** Added by WIPO.

Art. 1bis.

1. The rights in a registered trademark shall not entitle the proprietor to prohibit another person from using in the course of trade:

(a)

his own name and address;

(b)

references to the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or rendering of the service or other characteristics of the goods or services;

(c)

the trademark, where it is necessary to specify the intended purpose of a product or service, in

particular as accessories or spare parts; provided that the use is in accordance with the principles of honest trading and therefore does not have a trademark function, but only a descriptive function.

2. The rights in a registered trademark shall further not entitle the proprietor to prohibit use of the mark for goods put on the market in the European Economic Community under the mark by the proprietor or with his consent.

However, this limitation of the powers of the proprietor shall not apply where there exist legitimate reasons for the proprietor to oppose further marketing of the goods, in particular where their condition is changed or impaired after they have been put on the market.

Art. 2.

1. The persons who assume the function of guaranteeing the origin, nature or quality of specific goods or services may obtain registration for relevant marks as collective marks and shall have the right to authorize producers and merchants to use such marks.
2. The regulations governing the use of collective marks, their supervision and the relevant sanctions shall be attached to the application for registration; any amendment to such regulations shall be communicated by the proprietors to the Italian Patent and Trademark Office referred to in Article 52, below, for inclusion in the documents attached to the application.
3. The provisions of paragraphs 1 and 2 shall also apply to foreign collective marks registered in their countries of origin, provided that such country affords reciprocal treatment to Italy.
4. By derogation from Article 18.1(b), a collective mark may consist of signs or references which may serve in trade as a designation of the geographic origin of the goods or services. In such case, however, the Office may refuse a registration, by means of a decision stating its grounds, if the marks applied for could create a situation of unjustified privilege or be otherwise detrimental to the development of other similar initiatives in the region. The abovementioned Office may solicit the opinion in such case of governmental bodies and interested or competent agencies and bodies. Once granted, the registration of a collective mark consisting of a geographic name shall not entitle the proprietor to prohibit others from using the same name in the course of trade, provided that such use is in accordance with honest practice and is therefore limited to the function of an indication of origin.
5. Collective marks are subject to all other provisions of this Law, as long as they do not conflict with the nature of such marks.

Art. 3.

1. The renewal of the first registration of a mark or of a registered mark belonging to the same proprietor or to his successor in title, in accordance with Article 5, shall be effected by registration of the renewal.

Art. 4.

1. The exclusive rights afforded by this Decree shall subsist on registration.

1. The effects of first registration shall subsist as from the filing date of the application. In the case of renewal, the effects shall subsist as from the expiry of the prior registration.
2. Save for the provision of Article 1.1(b), registration shall be effective only with regard to the goods or services listed in the registration and to similar goods or services.
3. Registration shall be valid for 10 years as from the above date, except in the case of renunciation by the proprietor.
4. A renunciation shall become effective on entry in the Trademark Register referred to in Article 10 of Presidential Decree No. 540 of June 30, 1972, and notice thereof shall be published in the Bulletin referred to in Article 80 of this Decree.

Art. 5.

1. A registration may be renewed for the same prior mark, with respect to the same kind of goods or services in accordance with the International Classification of Goods and Services under the Nice Agreement of June 15, 1957, and subsequent amendments.
2. However, modifications of nondistinctive elements which do not substantially alter the identity of the mark originally registered shall be permitted.

3. Renewal shall be effected for 10year terms.

1. Renewal of the registration of a mark which has been transferred with regard to some of the goods or services shall be effected by each proprietor separately.
2. The initial date and duration of the effects of registration shall remain unchanged for marks registered with the World Intellectual Property Organization in Geneva.

Art. 6.

1. Subject to the limits and conditions set forth in the following Article, the Ministry of Industry, Trade and Craft Trades may grant by special decree temporary protection to new marks affixed to goods or materials relative to the provision of services displayed at official or officially recognized national or international exhibitions held on the territory of the State or in a foreign country that affords reciprocal treatment.

Art. 7.

1. Such temporary protection shall make the priority of the registration in favor of the proprietor or his successor in title retroactive to the date of delivery of the product or material relative to the provision of the services to the exhibition and shall have effect only if an application for registration is filed within six months from the date of delivery and, in any event, not later than six months from the opening of the exhibition.
2. If, in the case of an exhibition held in a foreign country, a shorter term is provided, an application for registration must be filed within that term.
3. In the event of more than one mark for goods or services delivered to the exhibition on the same date, the mark for which an application for registration has been filed first shall have priority.
4. The aforesaid dates shall be stated by the interested party and entered in the certificate of registration, after verification by the Italian Patent and Trademark Office.

Art. 8.

. The provisions of the international conventions in force shall remain effective with respect to the registration of marks with the World Intellectual Property Organization (WIPO) in Geneva.

Refusal of protection for such marks on the territory of the State may be issued within one year of the date of publication of the mark in the bulletin of the World Intellectual Property Organization (WIPO) in Geneva.

Chapter II 
Use of Trademarks

Art. 9.

1. In the case of prior use by others of an unregistered mark that is not well known or is only known locally, such other persons shall be entitled to continue to use the mark, and also to use it in advertising, within the same locality, notwithstanding the registration of the mark.

Art. 10.

1. It shall be prohibited for any person to use a registered mark after the relevant registration has been declared invalid if the invalidity is based on the fact that use of the mark is unlawful.

Art. 11.

1. A mark may not be used in a manner contrary to law nor, in particular, in a manner likely to create a risk of confusion on the market with other signs known to distinguish the enterprises, goods or services of other persons or, by virtue of the manner and context in which it is used, to mislead the public in any way, in particular as to the nature, quality or origin of the goods or services, or to infringe a copyright, industrial property right or any other exclusive right belonging to another person.

Art. 12.

1. A merchant may affix his own mark to the goods he puts on sale, but may not remove the mark of the producer or merchant from whom he has received the products or goods.

Art. 13.

1. It shall be prohibited to adopt as a trade name, denomination or company name, or as a signboard, a sign identical with or similar to another person’s mark if, by reason of the identical or related nature of the business of the proprietors of those signs and the goods or services for which the mark has been adopted, a risk of confusion may arise on the part of the public, which may also consist in a risk of association between the two signs.
2. The prohibition referred to in paragraph 1 shall extend to the adoption as a trade name, denomination or company name, or as a signboard, of a sign identical with or similar to a mark registered for dissimilar goods or services, which enjoys a reputation in the State, if use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.

Art. 14. [Repealed.]

Art. 15.

1. A mark may be transferred for all or some of the goods or services for which it has been registered.

1. A mark may be the subject of licenses, which may also be nonexclusive, for all or some of the goods or services for which it has been registered and for the whole or a part of the territory of the State, provided that, in the case of a nonexclusive license, the licensee expressly undertakes to use the mark to distinguish goods or services identical to those placed on the market or provided under the same mark in the territory of the State by the proprietor or by other licensees.
2. The proprietor of a trademark may assert the right of exclusive use of his mark against a licensee who contravenes the provisions of the licensing agreement with regard to its duration, the manner of use of the mark, the nature of the goods or services for which the license is granted, the territory in which the mark may be used or the quality of the goods manufactured and of the services provided by the licensee.
3. The transfer and license of a mark may in no event mislead the public as to those features of the goods or services that are essential for judging them.

Chapter I
Subject Matter of Registration

Art. 16.

1. Any new sign which can be represented graphically, particularly words, including personal names, designs, letters, numerals, sounds, the shape of goods or of their packaging, color combinations or tonalities, provided that they are capable of distinguishing the goods or services of one enterprise from those of other enterprises may be registered as a trademark, subject to Articles 18 and 21.

Art. 17.

1. Signs shall not be deemed new within the meaning of the preceding Article if, on the filing date of the application:

(a)

they consist exclusively of signs which have become customary in current language or in the established practice of the trade;

(b)

they are identical with or similar to a sign already known as a mark or distinctive sign for goods or services manufactured, put on the market or provided by other persons for identical or related goods or services if, due to the fact that the signs are identical or similar and the goods or services are identical or related, there exists a likelihood of confusion on the part of the public, which may also consist in a likelihood of association between the two signs.

Marks that are “well known” in accordance with Article 6bis of the Paris Convention shall likewise be considered known. Prior use of a sign, when it is not known or is only known locally, shall not prejudice novelty. Prior use of a sign by the applicant or his predecessor in title shall not be a bar to registration;

(c)

they are identical with or similar to a sign already known as a trade name, denomination or company name or as a signboard adopted by others if, by reason of the identical or related nature of the business they pursue and the goods or services for which the mark has been registered, there exists a likelihood of confusion on the part of the public, which may also consist in a likelihood of association between the two signs. Prior use of a sign, when it is not known or is only known locally, shall not prejudice novelty. Prior use of a sign by the applicant or his predecessor in title shall not be a bar to registration;

(d)

they are identical with or similar to a mark already registered in the State by other persons or that has effect in the State pursuant to an application filed at an earlier date or that has effect from an earlier date on the basis of a priority right or, in case of a Community trademark, a valid priority claim, for identical or related goods or services, if by reason of the identical or similar nature of the signs and the identical or related nature of the goods or services, there exists a likelihood of confusion on the part of the public, which may also consist in a likelihood of association between the two signs. An earlier mark which has expired more than two years previously, or three years in the case of a collective mark, or which can be considered forfeited for failure to use in accordance with Article 42, at the time of filing a claim or counterclaim for invalidity, shall not prejudice novelty;

(e)

they are identical with or similar to a mark already registered in the State by other persons or that has effect in the State pursuant to an application filed at an earlier date or that has effect from an earlier date on the basis of a priority right or, in the case of a Community trademark, a valid priority claim, for goods or services that are not related, where the earlier mark enjoys a reputation in the State or, if it is a Community mark, in the European Economic Community, and where use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

2. For the purposes of items (d) and (e) of paragraph 1, earlier applications shall be assimilated to prior registrations provided they are subsequently registered.

Art. 18.

1. In addition to signs differing from those set forth in Article 16, the following shall not be eligible for trademark registration:

(a)

signs contrary to the law, public policy or accepted principles of morality;

(b)

signs consisting exclusively of the generic names of goods or services or descriptive statements relating thereto, such as signs which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of the goods or of the provision of the service, or other characteristics of the product or service;

(c)

signs consisting exclusively of the shape imposed by the nature of the goods, of the shape necessary to obtain a technical result or of the shape which gives substantial value to the goods;

(d)

escutcheons and other signs referred to in the relevant international conventions, in the cases and under the conditions set forth in such conventions, as well as signs including badges, emblems and escutcheons which are of public interest, unless the competent authority has authorized their registration;

(e)

signs capable of deceiving the public, in particular as to the geographical origin, nature or quality of the goods or services;

(f)

signs the use of which would infringe a copyright, industrial property right or other exclusive right belonging to another person.

Art. 19.

1. By derogation from Articles 17.1(a) and 18.1(b), those signs which, by reason of the use made of them, have acquired a distinctive character prior to the date of application for registration, may be the subject of a trademark registration.

Art. 20. [Repealed.]

Art. 21.

1. Portraits of persons may not be registered as marks without their consent or, after their death, without the consent of their spouse and children or, if there is no spouse or children or after their death, of their parents or other ascendants or, if there are no parents or other ascendants or after their death also, of the other relatives up to the fourth degree inclusive.
2. Personal names other than the name of the person seeking registration may be registered as marks provided that their use does not damage the reputation, credit or dignity of those who are entitled to bear such names. However, the Italian Patent and Trademark Office shall be entitled to subordinate registration to the consent set forth in paragraph 1 of this Article. Registration shall in no case prevent those entitled to such name from using it in the trade name of their choice.
3. If they are well known, the following may be registered as marks only by those entitled to them or with their consent or with the consent of the persons referred to in paragraph 1: personal names, signs used in the artistic, literary, scientific, political or sports fields, names and abbreviations of exhibitions and events, and nonprofit bodies and associations, as well as the characteristic emblems thereof.

Chapter II 
Proprietor of Trademark

Art. 22.

1. A trademark registration may be obtained by anyone who is using or intends to use the mark in connection with the manufacture of or trade in goods or the provision of services in his own firm or in firms he controls or in firms using the mark with his consent.
2. 2. A trademark registration may not be obtained by anyone who has made the application in bad faith.
1. Trademark registrations may also be obtained by State, regional, provincial and communal administrations.

Art. 23.

1. A trademark registration may be granted to foreigners not having on the State territory the enterprises from which the goods or services distinguished by such mark originate, if the States to which applicants belong afford reciprocity of treatment to Italian citizens.
2. All advantages which are, have been or will be afforded on the territory of the State to foreigners in respect of trademarks by the international conventions shall be considered to extend to Italian citizens.

Art. 24.

1. The proprietor of a foreign mark or his successor in title shall be entitled to obtain, in accordance with the international conventions, the registration of a mark which has been previously registered abroad and to which reference is made in the application.