A trade mark is any sign that distinguishes the goods and services of one trader from those of another.
It' s designated by the following symbols:
- ™ (for an unregistered trademark, that is, a mark used to promote or brand goods);
- SM (for an unregistered service mark , that is, a mark used to promote or brand services);
- ® (for a registered trademark).
In Italy , a mark must meet two requirements in order to be validly registered: it must be distinctive and capable of graphic representation.
WHAT SIGNS CAN CONSTITUTE A MARK?
A mark can include, for example, words, logos, letters, numbers, colors, pictures, three-dimensional forms, signs perceived by the senses (sound, smell, taste and touch) or a combination of these, provided it overcomes the graphic representation requirement.
WHAT IS A MARK FOR?
A trade mark is a badge of origin, which allows consumers to identify and recognize the products and services offered by a certain trader.
WHY IS IT ADVISABLE TO PROTECT A MARK?
Registering a community mark provides the holder with the exclusive right to use it and with effective protection in Italy against copying, imitation, misappropriation, forgery or use of its reputation.
HOW CAN I OBTAIN THE RIGHT OVER A TRADE MARK?
The exclusive rights over a trade mark may be obtained in two ways:
1) By use:
The right to a mark belongs to whoever uses that specific sign for the first time and in an effective way to designate products or services in the market.
Some legal systems provide for the protection of non-registered marks when these have a certain popularity in the market and are recognized by consumers.
2) By registration:
The exclusive right over a mark is obtained by registering the sign at the
Italian Patent and Trademark Office.
WHICH SIGNS MAY NOT BE REGISTERED
A sign may not be registered if it incurred in:
Absolute prohibition, i.e. trademark contrary to public policy or to accepted principles of morality, devoid of any distinctive character, exclusively serves to designate the characteristics of the goods or service, cannot be represented graphically, is of such a nature that it may mislead the public, consists of a shape imposed by the nature of the product, consists a shape necessary to obtain a technical result or which gives a substantial value to the product or service, reproduces or imitates the name, coat of arms, flag, medals or other symbols of countries or intergovernmental organizations.
Relative prohibitions
Existence of an earlier mark.
A previous trademark (similar or identical) may be already registered in the name of a third party. In this case we are liable to opposition as well as judicial injunctions . To avoid such consequences, it's strongly recommended to perform an anteriority trademark search, relying on specialized and experienced lawyers.
Existence of an unregistered mark or another earlier distinctive sign
More complex searches are available in order to examine previous commercial signs could be enforced to prevent subsequent trademark registrations.
Marchiodimpresa.it performs such searches, drafting related legal advices on trademark registrability.
WHAT TERRITORY IS COVERED BY THE PROTECTION OF MY MARK?
The protection of a mark covers the whole Italian territory.
WHAT RIGHTS ARE GRANTED BY THE REGISTRATION OF A MARK?
The exclusive rights granted by the registration of a mark consist of the following:
• exclusive use of the mark in the Italian market.
• the right to prevent non-
authorized
third parties from using an identical or similar mark for products or services identical or similar to the ones under the registered mark.
• the right to prevent by administrative proceedings the registration of marks that can be confused with your own.
• the right to request the cancellation of subsequent marks that become confused with yours.
• the right to transfer, sell or license the mark like any other company asset.
There are some limits to trade mark rights.
Important note : An Italian trademark cannot be registered by subjects who do not have clearance in Italy . For this reason it's essential to rely on lawyers with clearance in Italy, specialized into trademark's protection.
Marchiodimpresa.it performs professionally such tasks, with experience and competence.
HOW LONG DOES THE EXCLUSIVITY RIGHT GRANTED BY A MARK LAST?
Trademark registration in Italy lasts 10 years, renewable indefinitely for 10-year periods.
FEES AND PAYMENTS
Official Fees:
Some fees apply in order to register an Italian Trademark, i.e. the following:
• EUR 101,00 for one class of goods and services (fees).
• + EUR 57,00 (application fees).
• + EUR 34,00 for each additional class if your application covers more than one class of goods and services
Representative costs:
When you decide to register your own mark it's advisable, in such a vast and delicate field, to rely on lawyers specialized in the protection of trademarks.
Our representative cost includes the following services:
- Word Mark Search (identity) within Italian Patent and Trademark Office database.
- Legal Advice on search results
- Legal Advice on classes of products / services in which is advisable to protect the trademark
- Payment of official fees required by the Italian Patent and Trademark Office
- Italian Domiciliation for trademarks' purposes.
- Drafting and filing Italian trademark application.
- Sending of the digital copy of filing issued by the Italian Patent and Trademark Office..
- Communication about the trademark publication.
- Communications between and with the Italian Patent and Trademark Office.
- Notice on the expiry of the priority right for the extension of the trademark abroad.
- Sending of Certificate of Registration
- Trademark Watch Service within 2 years since application's date
IS IT COMPULSORY TO USE A TRADE MARK?
In Italy , the holder of a trade mark must use the mark in trade in a real and effective way and in relation to the products and services for which the mark has been registered within 5 years from the application date.
It is normally the holder who makes use of the mark by placing it on goods. However, there are many other ways to use a mark, e.g. in advertising.
ARE THERE ANY SANCTIONS FOR NOT USING A TRADE MARK?
Is it possible to incur in an application for revocation: an action filed by third parties, requesting that the rights of the proprietor of the Italian trade mark be revoked, because:
- he has failed to put the trade mark to genuine use during the five years following registration or for a period of five consecutive years and there are no proper reasons for non-use; or
- as a consequence of action or lack of action by the proprietor, the Italian trade mark has become generic in respect of the goods and services it is registered for
- or in consequence of the use made of the Italian Trade Mark by its proprietor, the Italian trade mark is liable to mislead the public.
HOW CAN A MARK OWNED BY A THIRD PERSON BE USED?
Marks can be the object of different sorts of contracts, i.e. the following:
Trademark sales agreement
An Italian trademark may be sold without the underlying goodwill which subsists in the business associated with the mark. Trademark sales have to be transmitted to Italian Patent and Trademark Office for registration purposes.
Trademark license agreement
Italian trademark may be licensed to third parties. A trademark license should therefore include appropriate provisions dealing with quality control, whereby the licensee provides warranties as to quality and the licensor has rights to inspection and monitoring.
Critical legal aspects:
• Granting trademark license to one or more undertakes.
• Granting trademark license related on some products and services.
WHAT CIRCUMSTANCES WOULD PROVOKE THE CANCELLATION OF MY MARK?
A mark, for several reasons, may be subjected of expiration or nullity.
In order to avoid incurring these consequences is always advisable to rely on lawyers specialized in the protection of marks.
If you have any doubts about the validity of your trademark, contact us through our free service “Help Line”.
