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Trademark: As Italy is part of the European Union, if I register a trademark in Italy, is it valid in the whole community territory?

As Italy is part of the European Union, if I register a trademark in Italy, is it valid in the whole community territory?

Even if Italy is part of the European Union, trademarks and patents continue to be bound by the territorial regime, therefore, the Italian trademark, like any national one, explicates its own distinctive function for the claimed products/services in the country where it is registered. Thus if we register a mark in Italy, nothing prevents others registering the same mark in a foreign country, but it restricts them from exporting their own products in our country with that same mark.

If, on the other hand, we want to get protection extended all over Europe, we need to register a community trademark, through an appropriate procedure to be followed up by the community trademarks office based in Spain. The regulation EC 40/94 has, as a matter of fact, introduced the community trademark enabling, with one unique application, the unitary entitlement of protection valid in all the countries of the Union.

The main feature of this mark is, in fact, to be unitary and, therefore, indivisible, since it considers the European Union as one unique political and geographical area. From this characteristic we can deduct that the effects of the registration, transferral, surrendering, declaring the mark void or lapsing are produced in all the countries belonging to the union. However, if after presenting an application we find out that the mark is already protected at national level in one country, i.e. in France, we can always select to transform it in national mark in the other countries.