A Northern European technology company had built its brand over a decade. When it entered the Italian market. It discovered a locally registered mark. nearly identical in appearance and filed under overlapping Nice classification (the international system for categorising goods and services in trademark applications) categories. already held by a domestic competitor. Every month without resolution meant lost distribution agreements and eroding brand recognition in a market the client had spent two years preparing to enter.
This case study examines a cross-border trademark infringement claim brought in Italy by an international technology company against a domestic rights holder. The matter combined an IP registration challenge before the Ufficio Italiano Brevetti e Marchi (Italian Patent and Trademark Office) with parallel civil enforcement proceedings before the specialist IP section of an Italian commercial court. Resolution required coordinating Italian intellectual property legislation with the client's existing EU trademark rights across a period of approximately fourteen months.
The following sections set out the client's situation, the enforcement strategy selected, the key procedural milestones, and three transferable lessons for businesses facing comparable disputes across European jurisdictions.
Client profile and the challenge
The client was a mid-sized software and hardware business headquartered outside Italy. It held a valid EU trademark covering its core product name. The mark had been registered at the European Union Intellectual Property Office well before the Italian domestic registration it was now confronting.
The Italian party had filed a national trademark application covering substantially similar goods in overlapping Nice classification classes. The domestic registration had been granted without opposition – the client had not been monitoring the Italian national register at the time of filing. By the point the conflict surfaced, the Italian mark had been in force for just over two years.
The core challenge was twofold. First, the client needed to challenge the validity of the Italian registration on the basis of its senior EU rights. Second, it needed to stop ongoing use of the conflicting mark in Italian commerce while proceedings were pending – otherwise, the Italian party was accumulating goodwill that would complicate any eventual settlement. Delay carried a concrete cost: distribution partners in Italy were deferring commitment until the brand ownership question was resolved.
For a full picture of IP registration and enforcement options available to international businesses in Italy, see our intellectual property law services in Italy.
Strategy: combining administrative and civil routes
The team assessed three available routes. The first was a pure administrative challenge – filing an invalidation action before the Italian Patent and Trademark Office based on the senior EU trademark. The second was civil litigation before an Italian court with specialised IP jurisdiction. The third was a negotiated settlement supported by a formal legal position paper.
A standalone administrative challenge offered lower direct costs but uncertain timelines. Administrative proceedings in Italy can extend across multiple years. That timeline was commercially unacceptable given the client's market entry pressure.
A standalone civil action was faster in terms of interim relief but more costly and dependent on Italian procedural rules that differed materially from the client's home jurisdiction. The client – accustomed to common law procedures – initially underestimated the significance of how Italian civil procedure rules structure the evidentiary phase. In Italian proceedings, the judge controls the pace of evidence gathering to a degree that common law practitioners do not expect. This affects how quickly interim injunctive relief can be obtained and maintained.
The strategy ultimately chosen was a coordinated dual-track approach. An invalidation action was filed before the Italian Patent and Trademark Office, grounded in the priority date of the EU trademark. Simultaneously, a civil infringement claim was filed before the specialist IP section of the competent Italian court. The civil filing served two purposes: it placed the opposing party under immediate scrutiny and it preserved the option of seeking interim measures to restrict use of the conflicting mark pending resolution of the administrative challenge.
For businesses operating at the intersection of technology and intellectual property in Italy, the strategic considerations in AI and technology law in Italy are also directly relevant when brand identity is tied to software products.
Key milestones and complications encountered
The first milestone was establishing the evidentiary record. Demonstrating the seniority and distinctiveness of the EU trademark required collating registration certificates, evidence of commercial use across EU member states, and a comparative analysis of the conflicting marks across the relevant Nice classification categories. This took approximately six weeks to prepare to the standard required by Italian proceedings.
The second milestone – and the first significant complication – arose during the opposition proceedings phase at the administrative level. The Italian party contested the scope of the Nice classification classes covered by the EU mark, arguing that the overlap was narrower than the client maintained. The Italian Patent and Trademark Office requested supplemental classification evidence. This added approximately eight weeks to the administrative track.
On the civil track, the court accepted the infringement claim and set an early hearing to consider whether interim measures were warranted. The Italian party contested jurisdiction on procedural grounds, a tactic that required a further written submission addressing the territorial effect of EU trademark rights within Italian civil procedure. Courts in Italy have consistently applied EU intellectual property legislation to recognise the effect of a registered EU mark as grounds for civil proceedings before Italian courts. but the procedural objection still required formal rebuttal. Adding a month to the timeline.
The third milestone was the court's decision on interim measures. The court found sufficient grounds to issue an order restricting the Italian party's use of the conflicting mark in specific commercial channels pending the outcome of the administrative invalidity proceedings. This was the pivotal moment commercially. Once interim restrictions were in place, the client's Italian distribution partners moved forward with agreements.
The matter concluded approximately fourteen months after the initial filing. The administrative invalidity action was resolved in the client's favour on the basis of the senior EU trademark priority. The civil infringement claim was subsequently settled on terms that included an assignment of the Italian national registration to the client and a financial component covering legal costs.
To explore a comparable enforcement matter in another jurisdiction, the trademark dispute case study for Portugal sets out how similar strategic choices play out under Portuguese intellectual property legislation.
To discuss how a coordinated trademark enforcement strategy could apply to your situation in Italy, contact us at info@ferrazwhitmore.com.
Three transferable lessons
Monitor national registers even when EU coverage exists. An EU trademark provides strong priority rights across all member states. It does not automatically prevent a third party from filing a national trademark application. The Italian party in this matter obtained a domestic registration precisely because no opposition was filed at the time of publication. Monitoring national registers – particularly in target markets – is a preventive step that costs a fraction of the enforcement action that follows when a conflict is discovered after registration is granted. Early-stage opposition proceedings are faster and less costly than invalidation actions brought years later.
Align procedural strategy with commercial timelines. The administrative and civil tracks in Italian IP matters operate at different speeds and serve different purposes. Administrative invalidity proceedings establish the formal legal position. Civil proceedings – particularly the interim measures mechanism – address the commercial harm in the near term. Using only one track is rarely optimal. A lawyer in Italy with IP litigation experience will assess both routes before committing to either, because the interaction between them affects cost, timeline, and negotiating leverage throughout.
Anticipate procedural differences across legal traditions. This matter highlighted a recurrent pattern in cross-border IP enforcement: clients from common law jurisdictions frequently underestimate how differently civil procedure rules operate in Italy. The judge-led evidentiary process, the structure of written submissions, and the standards for obtaining interim measures all differ from what common law practitioners expect. Engaging a law firm in Italy with cross-border experience – one that can translate procedural differences into clear client expectations – materially affects how efficiently the matter progresses.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our intellectual property practice covers trademark registration, opposition proceedings, infringement claims, and cross-border IP enforcement strategies across European and international markets. We combine Portuguese civil law expertise with English common law tradition to support technology companies, brand owners, and investors navigating IP disputes in Italy, Portugal, and across the EU. Our attorneys have advised on trademark and IP registration matters before both national IP offices and EU-level bodies, and our Lisbon base provides direct access to both EU regulatory frameworks and common law enforcement strategies. As an international law firm in Italy and across Europe, we work with in-house legal teams and international entrepreneurs who require results-oriented counsel when brand rights are at stake. To discuss your IP situation in Italy, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.