Register a trademark
Community trademark:
It is always advisable to initially file a trademark in Italy because this gives us a priority of 6 months from the filing date in Italy with respect to national trademarks filed at a later date.
It is a trademark separate from the national one which is valid in all countries of the European Community.
Legal protection requires a single legal action valid for all countries of the Community in Alicante, Spain.
However, if there is an earlier, identical or confusingly similar national trademark in only one country and the owner wins the opposition, this invalidates the registration in all other EU countries. The costs of pursuing any oppositions are not included in the filing fees.
Furthermore, unlike a national trademark, the Community trademark is not enforceable against third parties until it is registered. The average registration time is 18 months.
If third-party owners of national trademarks file opposition, you risk not obtaining registration and finding yourself without a valid trademark in Italy, perhaps after a previous application for a Community trademark by a national trademark owner within the 6-month period of priority.
From the warehouse, it is always necessary to follow the various phases and intervene promptly if there are problems.
The sequence of the main statuses is given as an example:
Request received,
Granted filing date,
Verification of formalities in progress,
Classification OK,
Formalities checked OK,
Verification of absolute impediments,
Application accepted,
Application published (within 3 months following publication, anyone who wishes to do so can file an opposition to the registration of the trademark) If there are no oppositions from third parties or if the opposition has been rejected,
Registration in progress,
Registration fee paid,
Recording published.
You will be supported by specialized personnel, even in the event of opposition, throughout all phases of the procedure.
N.B.: Following the filing, improper payment requests are sent by entities that have nothing to do with the OAMI.
It's best if you fax these requests to us so we can confirm whether or not to proceed with the payment.
Following the filing, the OAMI/OHIM "Office for Harmonization in the Internal Market" sends a report on earlier national trademarks identical or similar to the one filed in several Community countries :
the cost is included in the deposit fees :
- 850,00 € for first class,
- 50,00 € for second class,
- 150,00 € for additional class.
After reviewing this report, it is possible to decide whether to proceed with or withdraw the Community trademark application.
By conducting a preliminary search for Italian, Community, international, and possibly United States trademarks, you already have a reasonable basis for filing a Community trademark. Targeted searches can be performed in the main EU countries such as France, Germany, and Spain.
It is also possible to carry out searches for national trademarks in each European Community country in advance.
Costs vary from country to country.
A cost/benefit assessment must be carried out.
It is certainly less expensive to opt for filing and, in the worst case scenario, proceed with withdrawing the application or converting it into many national trademarks in countries where there are no prior national trademarks.
To avoid losing exclusivity after the first 5 years of non-use, simply use it in Italy or another EU country.
