I have found out by chance that one of my employees has registered the trademark, in Spain, of one of our products. We have never even thought of registering it in Italy, can we do something against him?

The regulation on trademarks, unlike the one on patents, does not control the registration of company marks by employees, as the mark is commercial to be used by a company and if this use does not happen within a certain period of time, whoever has registered it loses all the rights over it. In this specific case the fact that it is an employee could weigh over the internal relations from the point of view of professional etiquette, or from the point of view of unfair competition, should this person start a similar business using the same trademark. For the moment, though, if the primary interest is of becoming the owner of the mark, the situation needs to be looked from different perspectives. First of all you need to assess if the mark in question is well known and if it has been widely used, maybe even in Spain. If this is the case, also if there isn’t even a registration in Italy, but this should be done as soon as possible, it is possible to advance an opposition to its registration claiming such a spread pre-use of the mark that it takes away the novelty to its subsequent registration. If, instead, the mark is only known locally and has never been used in Spain, matters get more complicated and, maybe, the best solution would be to try to reach an agreement with the employee to get the mark transferred at the cost of its registration, given his bad faith.