A mark is considered valid according to Italian and Community legislation if it is novel and has distinctive character.
The signs are not protected as trademarks if they are identical or confusingly similar to an earlier filed or registered trademark in relation to an identical or similar type of product or service.
Trademarks are acceptable if they are distinctive for the goods and services provided and are not registrable if they
- consist exclusively of signs or indications which in the trade indicate the kind, characteristics, quality, intended purpose, value or geographical origin of the goods or services;
- consist exclusively of signs or indications which have become customary in the current language or in established practices of the trade;
- are contrary to the Law, to public policy or to accepted principles of morality;
- are deceptive, being of such a nature as to deceive the public, such as to the nature, quality, place of production or geographical origin of the goods and services;
- include badges, emblems or armorial bearings such as those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given.
The lack of novelty and distinctive character cause the invalidity of the mark.
Trademark protection can be obtained through registration or also through use, in particular in Italy and in the European Union.
Even if trademarks can be protected through use, it is advisable to register the trademark by filing an application at the national trademark office since a registration provides the exclusive right to prevent unauthorized use of the trademark for identical or confusingly similar products.
By contrast, in case of infringements the owner of an unregistered trademark has to prove to the proprietor of a subsequent application of an identical or similar sign that (i) the mark has acquired a reputation not merely local among the public and that (ii) its use is detrimental to the reputation or to the distinctiveness of the mark. This evidence shall be given only in a legal action. If the unregistered mark's reputation is only local, competitors may register legitimately the same trademark.
Therefore, registering a trademark will provide stronger protection, particularly in case of conflict with an identical or confusingly similar trademark.