Subsequent territorial extension of the international trademark
The Madrid system, consisting of the 1891 Agreement and the 1989 Protocol, allows those who have already registered a trademark in the country of origin to extend its effects also in Italy and in the other member States. This mechanism, known as subsequent territorial extension, is much appreciated by foreign companies that decide to expand their business in Italy after an initial filing in another country. The procedure is managed by the World Intellectual Property Organization based in Geneva and allows, with a single act, to obtain a centralized registration that produces effects equivalent to a national registration in the designated countries, subject to refusal, since each designated State may refuse protection under its own law.
How to ensure the protection of your trademark in Italy and abroad
Registration is only the first step in defending one’s distinctive sign. Protection of a trademark in Italy and abroad requires active and constant management. The owner must monitor so that no one else attempts to register similar or identical trademarks and, in case of violations, has the right to oppose or take legal action.
In Italy, opposition can be filed within three months from the publication of the application in the Trademarks Bulletin. Internationally, the Paris Convention guarantees a six-month priority period during which the owner may extend protection of their trademark to other countries while maintaining the date of the first filing. It is also important to renew the registration periodically: in Italy and in the European Union the duration is ten years, renewable without limits, while in the countries adhering to the Madrid system the timelines may vary.
Protecting a trademark also means monitoring the market to prevent unauthorized use and entering into license or franchise agreements when you wish to grant third parties the use of the distinctive sign. Without adequate protection, the risk is that the trademark loses value or is exploited by unfair competitors.
A special mention must be made with reference to incentives for SMEs in 2025. For European small and medium-sized enterprises, 2025 offers interesting savings opportunities thanks to the EUIPO SME Fund. SMEs can obtain reimbursements of up to 75% of the costs incurred for the registration of trademarks, designs and models at national, regional and EU level. The maximum contribution is EUR 1,500 per beneficiary and covers filing, class, examination, registration and publication fees. This tool represents a concrete opportunity for foreign companies that wish to protect their trademarks in Europe while containing initial costs.
Trademark protection in Italy: how it works and why to do it
The trademark registered in Italy grants the owner an exclusive right, which translates into the possibility of preventing others from using identical or confusingly similar signs for similar goods or services. This power represents a strategic advantage for any company operating on the Italian market. Registration makes it possible to strengthen commercial presence, to access forms of financing more easily and to enhance the trademark as an intangible asset that can be transferred or licensed.
The exclusive right on the registered trademark lasts ten years from the date of filing of the application and is renewable for subsequent periods of equal duration without limits. During this period, the owner can exercise full control over the use of their distinctive sign, authorizing or prohibiting its use by third parties through license or franchise agreements. This territorial exclusivity extends throughout the national territory and covers not only identical use of the trademark, but also the use of similar signs that may create confusion among consumers for related goods or services.
Legal protection is particularly relevant in cases of unfair competition or counterfeiting. Without a valid registration, defending a trademark becomes much more difficult. For this reason, registration in Italy is not only a legal requirement, but a far-sighted choice that protects the identity of the company and consolidates its value in the long term.
The International Law Firm Boschetti supports foreign companies in every stage of registration in Italy of trademarks, from the preliminary assessment to the defense of the distinctive sign in case of disputes. Our experience allows us to identify the most advantageous strategy for each client, whether it is filing an Italian trademark, or aiming at European or international protection.
We handle the preparation and filing of the application, the translation and legalization of documents coming from abroad, the coordination with the Italian Patent and Trademark Office, with EUIPO and with WIPO. We also provide assistance and legal representation in oppositions and judicial disputes, thus ensuring effective and lasting protection of the trademark.
For foreign companies, our work is not limited to the bureaucratic aspect: we offer complete advice that integrates knowledge of Italian regulations with international rules, allowing to avoid mistakes and waste of time. Entrusting our firm means protecting one of the company’s most important assets, the brand, and ensuring a solid and safeguarded entry into the Italian and European market.
