Register a trademark 

- Validity requirements

The Industrial Property Code excludes the registrability by the Trademark and Patent Office and therefore the validity of trademarks lacking distinctive character (Art. 13), not new (Art. 12), and not permitted (Art. 14).

Art. 7. Industrial Property Code - Subject of registration

1. 
   1. Any sign capable of being represented graphically, in particular words, including personal names, designs, letters, numbers, sounds, the shape of the product or its packaging, color combinations or shades, may be registered as a trademark, provided that they are capable of distinguishing the products or services of one company from those of other companies.
   
   

Art. 12. Industrial Property Code - Novelty

1. Signs are not new, pursuant to Article 7, if on the date of filing the application:

1. ) consist exclusively of signs which have become commonly used in current language or in the constant uses of commerce;
2. ) are identical or similar to a sign already known as a trademark or distinctive sign of products or services manufactured, marketed or supplied by others for identical or similar products or services, if due to the identity or similarity between the signs and the identity or affinity between the products or services there may be a risk of confusion on the part of the public, which may also consist of a risk of association between the two signs. A trademark is also considered well-known if, pursuant to Article 6-bis of the Paris Convention on Industrial Property, revised in Stockholm on 14 July 1967 and ratified by Law No. 424 of 28 April 1976, it is well-known among the interested public, also by virtue of the notoriety acquired in the country through the promotion of the trademark. The previous use of the sign, When it does not imply notoriety, or merely local notoriety, it does not remove novelty, but the third-party prior user has the right to continue using the trademark, even for advertising purposes, within the limits of local diffusion, despite the registration of the trademark itself. Previous use of the sign by the applicant or its assignor does not constitute an obstacle to registration;

) are identical or similar to a sign already known as a company, name or business name, sign and domain name corporate, adopted by others, if due to the identity or similarity between the signs and the identity or affinity between the business activity carried out by them and the products or services for which the trademark is registered, there may be a likelihood of confusion on the part of the public, which may also consist of a likelihood of association between the two signs. Previous use of the sign, when it does not imply notoriety or implies purely local notoriety, does not detract from novelty. Previous use of the sign by the applicant or his predecessor in title does not constitute an obstacle to registration;
...omisiss...) are identical or similar to a trademark already well-known pursuant to Article 6-bis of the Paris Convention on Industrial Property, for products or services even if not similar, when the conditions set out in letter g are met);) in the cases referred to in letters d) and e), the novelty of the earlier trademark does not cease if it has expired for more than two years or three years if it is a collective trademark or can be considered to have lapsed due to non-use pursuant to Article 26 at the time of filing the application or the nullity exception.

Art. 13. Industrial Property Code - Distinctive ability

1.  They cannot be registered as trademarks of business signs devoid of distinctive character and in particular those consisting exclusively of generic names of products or services or by descriptive indications that refer to them, such as signs that in trade may serve to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of manufacture of the product or provision of the service or other characteristics of the product or service.
2.  By way of derogation from paragraph 1 and Article 12, paragraph 1, letter a), signs which, prior to the application for registration, have acquired a distinctive character as a result of the use made of them, may be registered as a trademark.
3.  The trademark cannot be declared or considered null if, prior to the filing of the application or the nullity exception, the sign which is the object of the trademark has acquired a distinctive character as a result of the use which has been made of it.
4.  The trademark lapses if, due to the activity or inactivity of its owner, it has become a generic name for the product or service in commerce or has lost its distinctive capacity.
   
   Art. 14. Industrial Property Code - Lawfulness

1. They cannot be registered as trademarks:

• signs contrary to the law, public order or morality;
• signs capable of deceiving the public, in particular as to the geographical origin, nature or quality of the products or services;
• signs whose use would constitute a violation of another's copyright, industrial property right or other exclusive right of third parties.

2. The trademark lapses:

• if it has become capable of misleading the public, in particular as to the nature, quality or origin of the products or services, due to the manner and context in which it is used by the owner or with his consent, for the products or services for which it is registered;
• if it has become contrary to the law, public order or morality;
• for failure by the owner to carry out the checks required by the regulatory provisions on the use of the collective trademark.

Trademark owner's rights

Art. 20. Industrial Property Code - Rights conferred by registration

1.  The rights of the owner of a registered trademark consist of the exclusive right to use the trademark. The owner has the right to prohibit third parties, without their consent, from using it in their economic activity: a sign identical to the trademark for goods or services identical to those for which it was registered;

1. 1. ) a sign identical or similar to the registered trademark, for identical or similar products or services, if due to the identity or similarity between the signs and the identity or affinity between the products or services, there may arise a risk of confusion on the part of the public, which may also consist of a risk of association between the two signs;
   2. ) a sign identical or similar to the registered trademark for products or services even if not similar, if the registered trademark enjoys a reputation in the country and if the use of the sign without due cause allows one to take unfair advantage of the distinctive character or the reputation of the trademark or is detrimental to the same.

1.  In the cases mentioned in paragraph 1, the trademark owner may in particular prohibit third parties from affixing the sign to the products or their packaging; from offering the products, placing them on the market or stocking them for such purposes, or from offering or providing services marked by the sign; from importing or exporting products marked by the sign itself; from using the sign in commercial correspondence and in advertising.
2.  The trader may affix his own trademark to the goods he puts on sale, but he may not remove the trademark of the manufacturer or trader from whom he received the products or goods.
   
   Art. 22. - Unity of distinctive signs.
3.  It is forbidden to adopt as company, name or business name, sign and domain name a company sign that is identical or similar to another's trademark if, due to the identity or affinity between the business activity of the owners of those signs and the products or services for which the trademark is adopted, there may be a risk of confusion on the part of the public, which may also consist of a risk of association between the two signs.
4.  The prohibition referred to in paragraph 1 extends to the adoption as a company name, denomination or business name, sign and company domain name of a sign identical to or similar to a registered trademark for products or services, even if not similar, which enjoys renown in the State if the use of the sign without just cause allows one to take undue advantage of the distinctive character or the renown of the trademark or causes damage to the same.