Trademark Litigation in Italy for Foreign Companies

Imagine a foreign company that has built a successful brand in several European markets. The company owns a registered trademark and discovers that an Italian competitor has started using a highly similar sign for competing products sold in Italy.

This illustrative case study shows how trademark litigation in Italy may develop and how foreign companies can protect their brand before the Italian courts.

llustrative case study: the facts described on this page are hypothetical and are intended to explain how trademark litigation may be handled in Italy.

The foreign company discovers that an Italian business is using a sign which is almost identical to its registered trademark.
The competing sign appears on the company’s website, product packaging, advertisements and promotional materials. The foreign trademark owner is concerned that customers may believe that the Italian business is connected with, authorised by or commercially associated with the foreign company.
The first question is whether the conduct amounts to trademark infringement under Italian and European Union law and whether there is sufficient evidence to take legal action in Italy.

An Italian trademark litigation lawyer would first examine the trademarks owned by the foreign company, their territorial scope, the goods and services covered by the registrations and the similarity between the competing signs.
The assessment would also consider the similarity between the products or services concerned, the likelihood of confusion and the actual commercial use being made of the disputed sign.
Evidence is critical. Screenshots, catalogues, advertisements, invoices, packaging, online marketplace listings and commercial correspondence may all become relevant in subsequent proceedings.

Not every trademark dispute requires immediate litigation.
Depending on the circumstances, the foreign company may first decide to send a cease-and-desist letter requesting the Italian company to stop using the disputed sign.
However, where the infringement is causing significant commercial damage or there is a risk that the infringing products will continue to circulate on the market, court proceedings may become necessary.
The strategy should therefore be based on the commercial significance of the infringement, the strength of the evidence and the urgency of the situation.

In our hypothetical case, the Italian competitor continues to use the disputed sign despite receiving a formal notice.
The foreign company therefore considers seeking urgent judicial protection.
Italian law provides procedures that may allow a trademark owner, where the legal requirements are satisfied, to seek interim measures before a final judgment is issued.
Depending on the circumstances, these measures may be aimed at stopping the alleged infringement, preventing further use of the disputed trademark or preserving evidence relevant to the proceedings.
In a commercial dispute involving an active market infringement, speed may be a decisive factor.

If the dispute cannot be resolved, the foreign trademark owner may commence proceedings before the competent Italian court.
The proceedings may concern trademark infringement, likelihood of confusion, unauthorised use of the trademark, unfair competition, cessation of the infringing conduct, damages and other remedies available under Italian and European Union law.
For a foreign company, one of the key practical issues is having Italian counsel who can manage the proceedings locally while maintaining direct communication with the company’s management, in-house counsel or foreign IP lawyers.
The objective is not litigation for its own sake, but to protect the commercial value of the brand and stop conduct that may damage the company’s position in the Italian market.

Trademark litigation may also arise in the opposite situation.
A foreign company may receive a cease-and-desist letter from an Italian trademark owner or may be sued before an Italian court for alleged trademark infringement.
In that case, the company needs to assess the validity and scope of the claimant’s rights, the alleged infringement, the available evidence and the procedural options under Italian law.
Mattioli Studio Legale assists foreign companies both in enforcing trademark rights in Italy and in defending trademark infringement claims.

Mattioli Studio Legale assists foreign companies, international businesses, in-house legal departments and foreign IP law firms in trademark disputes and enforcement proceedings in Italy.
Our assistance may include pre-litigation assessment, cease-and-desist strategies, urgent proceedings, representation before the Italian courts and coordination with foreign counsel in cross-border disputes.
Legal assistance and reporting can be provided entirely in English.

If your company believes that its trademark is being infringed in Italy — or if you have received a trademark infringement claim from an Italian company — we can assess the situation and advise you on the available legal options.

Contact Mattioli Studio Legale

Email: info@mattiolistudiolegale.com
Telephone: +39 335 704 4919

Italian trademark litigation assistance for foreign companies and international businesses.

Yes. A foreign company may bring trademark infringement proceedings in Italy where the relevant legal and jurisdictional requirements are met. The appropriate court and procedural strategy depend on factors such as the rights invoked, the place of the alleged infringement, the parties involved and the circumstances of the dispute.
Before commencing proceedings, it is advisable to assess the scope of the trademark rights, the available evidence and the remedies that may realistically be obtained before the Italian courts.

Italian law provides for interim measures in trademark disputes where the relevant legal requirements are satisfied. Depending on the circumstances, a trademark owner may seek urgent relief aimed at stopping the allegedly infringing conduct, preventing further use of the disputed sign or preserving evidence.
The availability of an injunction must be assessed on a case-by-case basis, taking into account the urgency of the matter, the strength of the rights invoked and the evidence available.

Trademark disputes in Italy are generally heard by the courts having jurisdiction under the applicable Italian procedural rules, including the specialised business sections competent for intellectual property matters.
The competent court may depend on several factors, including the place where the infringement occurred, the defendant’s location, the rights involved and any relevant contractual arrangements.

In most court proceedings in Italy, a foreign company will need representation by an Italian lawyer admitted to practise before the competent court.
Mattioli Studio Legale can act as Italian counsel for foreign companies, in-house legal departments and international IP law firms, handling the proceedings in Italy while coordinating with foreign counsel where necessary.