Register a trademark - Preliminary notes
Where trademarks are filed.
Trademarks are filed with the competent national trademark and patent offices, which will grant registration according to different timeframes from office to office. In particular, for Italy, at the Italian Patent and Trademark Office (U.I.B.M.), for the filing of the Community trademark (a single trademark valid for the 27 countries of the European Union) at Office for Harmonization in the Internal Market (OHIM), for the international trademark through the filing procedure at the World Intellectual Property Organization (W.I.P.O.) or by filing national trademarks in each trademark office of each country of interest.
Once the deposit has been made, a certified copy with return receipt certifying the deposit and the relevant invoice for the service performed will be sent by registered mail with return receipt.
Let us now try to provide the reader with an initial overview of trademark registration.
A trademark can also be registered in the name of one or more natural persons without a VAT number. It can then be transferred or licensed for use, even free of charge, to a company established subsequently, or used by the same natural persons following the opening of a VAT position for the sale of products/services.
The question that is usually asked is why it is appropriate to register a trademark..
The brand is the distinctive sign of the products marketed by the entrepreneur and allows the consumer to distinguish the goods sold from those of competing companies. After a positive experience with a certain product purchased, the consumer seeks to reduce search costs for repeat purchases by searching for the entrepreneur's products, identifying them through the brand. A process of consumer loyalty is created through the distinctive sign that encompasses all the investments in research and development and advertising of the product.
By registering the trademark, the entrepreneur obtains the exclusive right to use the distinctive sign.
The exclusivity that the law grants to the entrepreneur has a social function because it makes him responsible towards the consumer for his own behavior and prevents others from taking advantage of the credit he has acquired with consumers.
Although unregistered trademarks (known as de facto trademarks) are protected in Italy, we still recommend filing a trademark application because protection is limited to the geographic area of actual use and requires proof of actual use.
Merely local use may not be considered sufficient to justify the cancellation of a subsequently filed national trademark, regardless of whether it has been used or not.
To validly file a trademark, the sign must be new, legal, and distinctive.
In order to ensure its distinctiveness and novelty compared to trademarks relating to the same class, a trademark must not be descriptive of the product, but must be as much of a fanciful writing/logo as possible.
The distinctive character of a trademark is in fact greater the more a trademark is a fanciful writing/logo and differs from trademarks already registered in the same product class.
The distinctiveness of a trademark is fundamental to its validity and to its defense against similar trademarks.
When choosing a trademark, it's important to consider both advertising and commercial needs, as well as protection against counterfeiting and imitation. For example, you might consider filing defensive trademarks such as "similar but not identical to the principal trademark" or complex trademarks consisting of multiple individually filed signs.
The trademarks that can be registered can be:
figurative mark, Consisting of one or more words in a specific spelling, also in association with one or more graphic sketches or a drawing. It protects the registered graphic logo from identical or confusingly similar logos.
N.B.: It is not possible to register a shape that is necessary for a technical result, e.g. the design of a car cylinder.
wordmark, Consisting of a phrase or words written in normal characters. It provides stronger protection for words in any graphic or printed representation.
Other types of brands: three-dimensional, colored, sound, olfactory, hologram and others.
For the purposes of the estimate, these trademarks are considered equivalent to the figurative trademark.
The exclusivity term is 10 years from the filing date and can be renewed indefinitely for 10-year periods. Renewal must be made in the final year of validity. A trademark protects against identical or similar signs for the classes for which it was filed and related classes if, due to their identity or similarity, there is a likelihood of confusion or association between the two signs. An exception is a well-known trademark known to a large number of consumers, which enjoys broader protection.
