Italian Intellectual Property 2026: UIBM, EUIPO, and the Conflict of Laws

|:---|:---| | Trademark | UIBM (Italy) / EUIPO (EU) | 10 Years (Renewable) | Brand names, logos, slogans. | | Patent | UIBM / EPO / UPC | 20 Years | Technical and industrial inventions. | | Design | UIBM / EUIPO | 5 Years (Max 25) | Aesthetic appearance of products. | | Copyright | SIAE (Registry) | Life + 70 Years | Creative and software works. |

The Conflict of Laws Dimension: Dicey Rules 145–152

Jurisdiction: Who Decides?

The jurisdiction question — which court can hear an IP dispute — is the threshold issue in any cross-border infringement case.

Rule 145 — Registered Rights: Exclusive Jurisdiction of the Registration State

Under Dicey Rule 145, the court of the country where a patent, trademark, or design is registered (or applied for) has exclusive jurisdiction over questions of registration and validity. An English court cannot determine whether an Italian patent registered at the UIBM is valid. An Italian court cannot determine whether a UK trademark registered at the UKIPO is valid. This is an absolute jurisdictional boundary.

The rule derives from Article 24(4) of the Brussels I Regulation (Recast) (EU No 1215/2012), which provides:

"In proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the European Union or an international convention deemed to have taken place, shall have exclusive jurisdiction."

Italy participates in this scheme, even post-Brexit, through the Hague Convention on Choice of Court Agreements for EU-UK relations.

Rule 146 — Unregistered Rights: In Personam Jurisdiction

For rights that do not require registration — primarily copyright and passing off — any court with in personam jurisdiction over the defendant can hear the dispute. This means that if the defendant is present in England, an English court can adjudicate a claim for infringement of Italian copyright. Likewise, if the defendant is present in Italy, an Italian court can adjudicate a claim for infringement of English copyright.

This rule has particular significance for digital infringement. If an Italian company distributes infringing copies of copyrighted material online, and the copyright owner is a UK company, the UK courts may have jurisdiction if the Italian company has sufficient connection to the UK (e.g., directing sales to UK consumers).

Illustration from Dicey (Rule 146): A group of pharmaceutical companies sought declarations of non-infringement for several patents, including Italian patents. The court confirmed that jurisdiction existed over such non-UK patents where the defendant was subject to the English court's in personam jurisdiction.

Rule 147 — Ownership and Infringement: Broader Jurisdiction

For claims concerned solely with the ownership or infringement (rather than validity) of IP rights — both UK and foreign — the court has jurisdiction if it has in personam jurisdiction over the defendant. This creates an important distinction: an English court cannot determine whether an Italian patent is valid, but it can determine whether the defendant has infringed that patent (provided the defendant is within the jurisdiction).

Choice of Law: The Lex Loci Protectionis (Rule 152)

This is the most important conflict of laws rule for IP practitioners.

Rule 152 provides:

"The law applicable to intellectual property... is the lex loci protectionis — the law of the country for which protection is claimed."

The principle is absolute: the law governing an IP right is the law of the country where protection is sought, not the law of the country where the right was created, not the law of the owner's domicile, and not the law governing a contract between the parties.

If a UK brand owner claims that their trademark has been infringed in Italy, the infringement is governed by Italian law — not English law, not the law of the contract between the parties, and not any "home country" law. The Italian court (or an English court exercising jurisdiction under Rule 147) will apply Italian trademark law to determine whether infringement has occurred.

This principle has several critical consequences:

Different standards across jurisdictions: What constitutes infringement in Italy may differ from what constitutes infringement in England. The scope of protection, the available defences, the remedies, and the measure of damages are all determined by the lex loci protectionis.

No "home court advantage": A UK brand owner suing for infringement in Italy cannot rely on English law standards. The Italian standard applies — and Italian law may provide broader or narrower protection depending on the specific right and the specific facts.

Multi-jurisdictional litigation: If the same act of infringement occurs in multiple countries (e.g., online counterfeiting), the owner must potentially apply the law of each country where protection is claimed. This can result in parallel proceedings or a single proceeding applying multiple laws.

Situs of IP Rights (Rule 151)

Under Dicey Rule 151, the situs of an intellectual property right is:

This classification affects questions of succession, assignment, and taxation. An Italian patent is situated in Italy. It is part of the Italian estate for succession purposes and is subject to Italian mandatory share rules if the owner dies domiciled in Italy. A UK trademark is situated in England. It vests in the English personal representative under Dicey Rule 156 and is administered under English law.

For a portfolio of IP rights spanning multiple jurisdictions, this creates a fragmented situs — each right is situated in the country of its registration, and the estate administration must account for each jurisdiction separately.

The Transferability Question

Whether an IP right is transferable is governed by the lex loci protectionis (Rule 152). Whether a particular contractual assignment of that right is valid depends on the law governing the assignment contract (typically chosen by the parties). This creates a split framework analogous to the movable property rules in Rules 141–143:

An assignment of an Italian patent that is valid under English contract law may nonetheless be ineffective under Italian law if the Italian formalities for assignment (registration at the UIBM) have not been satisfied.

The Unified Patent Court (UPC) — The New Jurisdictional Landscape

The Unified Patent Court (UPC) became operational in 2023, creating a single court system for European patent disputes. Italy is a participating state. The UK is not (having left the EU and withdrawn from the UPC Agreement).

What the UPC Changes

For European patents designated for Italy, the UPC has jurisdiction over infringement and validity claims. This means:

What It Means for UK-Italy Disputes

The UK is excluded from the UPC. This creates an asymmetry:

For practitioners advising on UK-Italy patent disputes post-Brexit, the jurisdictional analysis must be conducted separately for each territory. The UPC is not a "universal" patent court — it is a European system that the UK has chosen not to join.

Technical Risk: The Nice Classification Audit

In 2026, the UIBM has automated the classification audit phase. During registration, applicants must select specific "Classes" of goods and services under the international Nice Agreement.

Typical Conflicts with Common Law

The Geographic Reach Assumption

A primary conflict for international brands is the "Geographic Reach." Common law enterprises often assume that a trademark registered in their "Home Land" provides automatic global protection. In Italy, without an international extension (Madrid System) or a direct UIBM/EUIPO filing, the brand remains functionally unprotected. This allows for "Trademark Squatting," where local actors register foreign brand names with the intent of selling them back to the original owners when they attempt to enter the Italian market.

The lex loci protectionis principle (Rule 152) reinforces this: the UK registration protects only in the UK. Italian protection requires Italian registration. There is no extraterritorial effect.

The First-to-File vs. Common Law Use Doctrine

In common law jurisdictions (particularly the US), trademark rights can arise from use — actual commercial use in the marketplace creates enforceable rights even without registration. In Italy (and throughout the EU), rights arise exclusively from registration (subject to the narrow Preuso exception).

This doctrinal clash means that a US brand that has been trading internationally for decades — but has never registered in Italy — has no Italian trademark rights. An Italian third party can register the same mark and enforce it against the US brand owner. The US "common law use" doctrine has no extraterritorial effect.

The Exhaustion of Rights Doctrine

The exhaustion of rights doctrine — which determines when the IP owner loses the right to control the further distribution of goods they have already sold — differs between the UK and the EU:

For UK-Italy trade, this means that goods legitimately placed on the UK market by the right holder may not be freely imported into Italy by a parallel importer — the IP owner can block them at the Italian border because the rights have not been exhausted within the EEA. Conversely, goods placed on the Italian/EU market can be freely traded within the EEA but may face restrictions on entry to the UK.

Italian Case Law of Note

Folien Fischer AG v Ritrama SpA (Case C-133/11): Ritrama is a prominent Italian company. The case is a foundational authority on negative declaratory actions for non-infringement in private international law. It confirms that a party can seek a declaration of non-infringement in the courts of the defendant's domicile — allowing an Italian defendant sued for infringement to seek a counter-declaration in Italy.

Acacia Srl v Bayerische Motoren Werke AG (Case C-421/20): Acacia Srl is an Italian company. The case addresses unitary EU design rights and determines the "place where the initial act of infringement" occurred — a critical jurisdictional question for multi-state IP disputes.

The Cross-Border IP Strategy

For UK Companies Entering Italy

Register first: File with the UIBM or EUIPO before entering the Italian market. Do not assume UK registrations provide protection.
Conduct a conflict search: Use the UIBM and EUIPO databases to identify potential obstacles — prior registrations, descriptive objections, or bad-faith filings.
Select Nice Classes strategically: Over-classification leads to revocation risk; under-classification leads to gaps in protection.
Monitor for squatters: Implement a watching service on the UIBM and EUIPO registers to detect and oppose infringing filings.
Understand the UPC: For patent portfolios, determine whether to litigate through the UPC (pan-European effect, but no UK coverage) or through national courts (territorial, but familiar).

For Italian Companies Entering the UK

Register with the UKIPO: Post-Brexit, an EUTM no longer covers the UK. Italian companies must file separately with the UK Intellectual Property Office.
Understand the UK exhaustion regime: Goods placed on the EU market may face restrictions on parallel import into the UK.
Consider the Madrid Protocol: For multi-jurisdictional protection, the Madrid Protocol permits a single application (through WIPO) designating both Italy and the UK.

Professional Legal Considerations

Intellectual Property management in Italy is a race to the registry. In the 2026 environment, the security of a brand depends on the professional selection of "Nice Classes" and the immediate execution of a UIBM or EUIPO application.

Practitioners should advise clients that IP rights are inherently territorial. The law governing the right, the infringement, and the remedies is the lex loci protectionis — the law of the country where protection is claimed. A UK registration does not protect in Italy. An Italian registration does not protect in the UK. Post-Brexit, the UK is entirely outside the EU IP system (EUTM, Community designs, UPC), and separate UK filings are essential.

Strategic management involves a comprehensive "Conflict Search" across the European database prior to filing to identify potential barriers to registration. Proper administration requires the synchronisation of the IP assets with the corporate vehicle (e.g., an S.r.l.) and the implementation of a "Monitoring Service" to detect and oppose infringing filings by third parties in the Italian and EU markets.

For estates and succession planning, practitioners must account for the fragmented situs of IP portfolios — each registered right is situated in the country of its registration and may be subject to different succession rules.

Consult the IP Desk regarding your Trademark

Additional Notes for Professionals

The conflict of laws framework for intellectual property is stated in Rules 145–152 of Dicey, Morris & Collins on the Conflict of Laws (15th Edition), Chapter 26. The lex loci protectionis principle is confirmed by both Dicey Rule 152 and Article 54 of Italian Law 218/1995, which provides that rights in intangible property are governed by the law of the state for which protection is sought. Corporate vehicles holding IP assets are governed by Art. 25 of Law 218/1995 (law of the state of incorporation). The Italian CPI is Legislative Decree 30/2005. The Italian case law includes Folien Fischer AG v Ritrama SpA (C-133/11) and Acacia Srl v Bayerische Motoren Werke AG (C-421/20). The Unified Patent Court became operational in 2023; Italy is a participating state; the UK is not.

[!TIP] Authoritative Links: For more on the corporate vehicles that hold these IP assets, see our note on Italy S.r.l. Formation 2026 or Director Liability in Italy 2026. For the situs rules that determine IP succession, see Movable or Immovable? The Hidden Classification.