GUIDE TO TM SEARCH

The trademark search is a search of trademarks already filed and/or registered in a trademark database.

 

It is strongly suggested to conduct a trademark  before filing your application to determine if there is a registered or pending trademark that is identical/similar to your mark. Owners of registered or pending trademarks are entitled to oppose your registration. You can also be sued in Court if you use in Italy a trademark identical/similar to a trademark already registered.

 

The Italian Patent and Trademark Office (UIBM) do not perform trademark search and do not refund fees for trademark rejected upon opposition. For more information about the Italian trademark registration procedure please visit our registration procedure section.

 

Not only the Italian trademarks are in force in Italy, also the Community trademarks and the International trademarks designating Italy are valid in Italy. You can also search your trademark in the Community and International database for free.

 

TIPS TO PERFORM A TRADEMARK SEARCH

 

1.            INDIVIDUAL WORD SEARCH

If you desire to register a trademark that consists of a multi-word phrase (e.g., PEPSI-COLA) we suggest you to do a search for each individual  word in the phrase, also if there is no spacing between the terms (e.g., BESTCARE).

 

2.            SIMILAR WORDS SEARCH

We suggest you doing a search not only for identical words, but also for similar words.

 

3.            CAREFULLY ANALIZE GOODS/SERVICES

It is allowed to obtain the register of a trademark identical/similar to a registered trademark if they claimed not similar goods/services. For example, a registered trademark for clothing and the other for computer software.  

 

4.            THINK ABOUT THE LIKELIHOOD OF CONFUSION

Once you have performed the search, ask yourself, “Is there a likelihood of confusion?” between the trademark. The likelihood of confusion is a juridical term which apply when a trademark is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers.

 

An owner of a trademark is entitled to oppose your trademark registration and to commence civil legal procedure in Court against a party which infringes its registered trademark.

 

Actually, in order to properly consider the likelihood of confusion between the trademarks is necessary to be aware about the Italian industrial property code and relevant Court decisions. For that reason we strongly suggest you asking some legal advice in order to carefully evaluate the likelihood of confusion.

 

Our Professional Search Report provides you a comprehensive trademark search and legal analysis performed by Italian trademark attorneys. Click here to apply for a search report.

 

 

 

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