top of page
Search

UIBM and EUIPO compared: choosing an Italian or EU trade mark

Oct 20
3 min read

Registering a trade mark is an essential step in protecting a business's identity. However, the procedures and responsibilities of UIBM and EUIPO are often confused. This article explains the main differences clearly so that you can choose the right route to protect your trade mark.


UIBM and EUIPO: how the procedures differ


The UIBM (Italian Patent and Trademark Office) handles national trade mark registration, which covers Italy only. The EUIPO (European Union Intellectual Property Office) handles EU trade marks, valid throughout the European Union's member states.


Here are the main differences:


  • Territorial coverage: UIBM covers Italy only; EUIPO covers the whole EU.

  • Duration of protection: both provide renewable ten-year registration.

  • Registration procedure: UIBM examines applications for the Italian territory. An EUIPO application requires a broader assessment of risks because protection covers several countries.

  • Costs: registering with EUIPO generally costs more than an Italian UIBM application, but covers a wider territory.

  • Oppositions and disputes: EUIPO handles oppositions to EU trade marks, while UIBM handles oppositions to Italian national applications; court disputes follow the applicable jurisdiction rules.


These differences affect which procedure best suits your needs. If you operate only in Italy, UIBM may be the natural choice. If you want protection in several EU countries, an EUIPO application is an option to consider.


Eye-level view of an office desk with trade mark registration documents
Eye-level view of an office desk with trade mark registration documents

How the UIBM procedure works


The UIBM procedure is intended for those seeking trade mark protection in Italy. These are the main steps:


  1. Preliminary search: check whether the mark is already registered or similar to an existing one.

  2. Filing the application: submit the application online or on paper, specifying the relevant goods and services classes.

  3. Formal examination: UIBM checks that the application is complete and correct.

  4. Publication: the application is published in the Trade Marks Bulletin, opening a three-month period in which third parties may oppose it.

  5. Registration: if there are no unresolved oppositions or other obstacles, the mark is registered and a certificate issued.


The original article estimates around six to eight months for a straightforward procedure; actual processing times vary. You can monitor progress online and plan the costs.


What are the UIBM trade mark fees?


Knowing the costs is essential when planning a registration. The main government fees for an individual Italian trade mark are:


  • Filing fee: €101 for the first goods and services class.

  • Additional classes: €34 for each class after the first.

  • Renewal: €67 for the first class every ten years, plus €34 for each additional class.


Other charges, stamp duty and professional fees may apply. Check the current official fee schedule before filing; these amounts do not represent the total cost of the procedure.


Close-up view of a calculator and invoice relating to trade mark fees
Close-up view of a calculator and invoice relating to trade mark fees

How the EUIPO procedure works


The EUIPO procedure is intended for those seeking protection throughout the European Union and requires attention to risks across that territory. The steps are:


  1. Preliminary search: essential to identify potential conflicts with earlier rights in Europe.

  2. Filing the application: apply online through the EUIPO portal, specifying the goods and services classes.

  3. Formal and substantive examination: EUIPO checks formal requirements and whether the mark meets the absolute grounds requirements, including distinctiveness.

  4. Publication: publication opens a three-month period in which an opposition may be filed.

  5. Registration: if there are no unresolved oppositions or other obstacles, the mark is registered with protection in all EU member states.


Processing times depend on the application and any objections or oppositions. The original article's estimate of eight to twelve months is indicative and is not a fixed EUIPO deadline.


Which procedure should you choose? Practical advice


Choosing between UIBM and EUIPO depends on several factors:


  • Area of activity: consider UIBM if your business is limited to Italy, or EUIPO if you sell or operate in several EU countries.

  • Budget: UIBM usually has lower initial fees; EUIPO costs more but covers a wider territory.

  • Growth strategy: consider where you want to expand over the coming years.

  • Legal protection: EUIPO provides a unitary trade mark across the EU, rather than every country in Europe.


For guidance, consult an intellectual property professional. You can read more about the differences between UIBM and EUIPO procedures to understand which solution best suits your situation.


Protect your trade mark with a clear understanding


Registering a trade mark is a strategic investment. Choose the right procedure to avoid legal problems and support your business's growth. Follow the steps carefully, meet deadlines and keep your details up to date.


Remember that trade mark protection is an ongoing process. After registration, monitor the market and act against infringements. This is how you protect the value of your identity.


High-angle view of a businessperson reviewing trade mark documents
High-angle view of a businessperson reviewing trade mark documents

Understanding the differences between UIBM and EUIPO helps you act with confidence. Leave nothing to chance. Protect your trade mark today to build tomorrow's success.

 
 
 

Recent Posts

See All

Comments


bottom of page