Trademarks

TRADEMARKS

WHAT is a trademark

It is the means through which your company represents and conveys its image, it embodies the values and qualities of its products and services and establishes the strongest and most direct link with consumers.

WHY you want to register your trademark your trademark 

  • To acquire the exclusive right to use that sign in certainty and widely.
  • To prevent other companies from using unauthorized trademarks that are not only identical but similar.
  • To prevent the deposit of the same trademark by others.
  • Because a registered trademark is part of your company’s equity and is commercially exploitable:

- it can be licensed in exchange for royalties;

- it is essential in franchise contracts;

- it can be a prerequisite for obtaining financing.

HOW you can  register your trademark

Do it yourself: anyone can file an application for a trademark using the forms available on the UIBM website and paying the due taxes.  

By contacting a trademark attorney: in addition to saving you time, a consultant can: verify that your trademark possesses the requirements to be granted; through prior art searches ensure the there are no prior similar trademark; monitor and warn you in case third parties file trademarks that conflict with your registration.

 

If you're wondering ...

Virtually it never expires: a European Union trademark has a duration of 10 years from the filing date, at each expiry date it is possible to renew it for a further 10 years and so on indefinitely.

The same rule applies to Italy and most countries, and there are cases in which a registration has a longer duration, for example in Canada and in Lebanon 15 years or countries where the validity start date is that of granting the trademark.

 

The ® symbol indicates a trademark that has been granted by the competent Trademark Office, so that it can be placed next to your logo after receiving the registration certificate.

In the meantime, it is possible to indicate that there is a pending question on the trademark with the symbol ™

 

Unfortunately, Google search is not enough. Be aware that one of the essential requirements of a valid trademark is the novelty, so it is not enough that prior trademarks are not identical, they must be not similar within a product or service category.

Therefore, a thorough and proper prior art search is highly recommended before filing a trademark registration, this will allow ensuring the road is clear from obstacles before committing to substantial investments.

Free online databases are made available by most Trademark Offices, a thorough professional search is needed to ensure the result are not limited to an exact match, but effectively cover all possibly conflicting trademarks that may cause legal obstacles.

Such thorough professional search uses search keys and matches results from different databases to cross the data obtained to ensure your trademark is uniquely identifying you, no similar trademarks are known across all relevant countries and no similar trademarks have been refused registration from relevant Trademark Offices.

 

When a trademark is used without registration it is called a “de facto” trademark.

The de facto trademark enjoys limited protection only in some countries (Italy for instance), but no protection in others. Limited protection means e.g. if the trademark is only locally known, 3rd parties cannot be preempted from using and/or registering an identical or similar trademarks, in this event the original owner can only continue to use the trademark within the same commercial and territorial boundaries where he can prove use prior to the 3rd party registration.

It is recommended to monitor newly submitted registration requests in all countries of interested, in fact a prompt intervention is essential to prevent 3rd parties from registering trademarks potentially conflicting with your registered trademark.

Each industrial property consulting firm offers surveillance services that allow you to monitor all the databases of relevant world's Trademark Offices.

The trademark is protected exclusively in the territory in which registration is requested; if you then file an Italian trademark application at the UIBM, it will be effective in Italy. Elsewhere, third parties may register a trademark identical or similar to yours.

 

The answer to this question varies depending on the country or procedure you choose.

The fastest office is EUIPO which, in the absence of formal objections or oppositions by 3rd parties, examines the application and issues the registration certificate in about 4-5 months from the time of filing.

A little longer process is needed for an Italian trademark: the UIBM, on the same conditions as above, takes on average 8-9 months for the trademark to be granted.

The de facto trademark is an unregistered trademark.

It is not always necessary to request the registration of a sign to obtain an exclusive right on it. You can acquire rights on a trademark thanks to its use, provided that it can be shown that the sign has been used by its company in an effective, intentional and continuous manner.

From this it derives that its value depends on the notoriety that it acquires among consumers: if the de facto trademark is used and known only locally, the holder will not be able to prevent others from using or registering an identical or similar sign, but may continue to use it within the boundaries in which it had been used prior to the 3rd party filing.

In order to "compete" with a registered trademark or the use of others, the trademark owner must prove a widespread use and clear identification of the sign on the national territory.

Furthermore, the protection of the trademark is based on the unfair competition rules, in this case, competition is deemed unfair if there is the possibility of misleading consumers as to the original supplier by using a similar trademark. So in order to obtain protection, the user of a de facto trademark has to prove that there is a risk of misleading consumers.

Finally, only some countries recognize and guarantee certain protection to the de facto trademark, while others, such as China, only protect registered trademarks.

Ultimately, you can start a business with a de facto trademark but then it is highly recommended to register it as soon as you are sure of your choice.

The collective trademark guarantees the origin, nature or quality of products or services. The registration of collective trademarks is granted to those parties who have the function of guaranteeing the origin, nature or quality of certain products or services and who can grant the use of the same trademarks to producers or retailers who meet certain requirements.

Usually, the collective trademark is requested by institutions and/or associations to give certainty as to the origin and quality assurance, in compliance with the rules for affixing the trademark, attached to the registration application.

Entitlement to register a collective trademark is granted only those subjects, including natural persons, whose task is not to produce and market, but rather to control and guarantee the quality standards, the origin and composition of a product, by regulating the use of the collective trademark and granting it only to products that meet the established criteria.

Precisely because of their function, which is primarily a guarantee for the consumer, the collective trademark can also consist of a sign indicating the geographical origin of the products or services.

You can protect your trademark abroad at any time, whether or not you have a trademark already filed or registered in a first country of choice.

However if the filing abroad is done within 6 months from the original filing (national or European) the same original priority date is granted: it is as if it had been filed same day of the original and supersedes applications from third parties that were filed during these 6 months period.

The legislation in Italy,  Europe and most countries, provides that after filing, the competent Trademark Office, having assessed the formal compliance, publishes the application, this allows the entitled parties to file an opposition to the grant if they can show this would be detrimental to their prior rights.

The time frame for filing an opposition in Italy and EU is 3 months from the date of publication.

This procedure is established before the competent examiners of the Trademark Office, thus allowing a saving of time and costs compared to a lawsuit for counterfeitingwithin the judiciary system.

Moreover, in the spirit of facilitating inter-partes and out-of-court solutions, the opposition procedure can be suspended precisely in order to allow parties to find an agreement that avoids conflicts and additional costs.

However, an opposition can only be started while the 3rd party's trademark is pending and only within 3 months after publication. Afterwards one can only resort to a real judiciary action. Therefore it is highly recommended to periodically monitor published applications to check if there is a risk of imitation, appropriate services are available to this extent.

DISTINCTIVE SIGN: a great trademark is one that clearly differentiates the company its products and/or services.

Thus increasing consumer confidence in intrinsic features, the perception of quality and brand loyalty. A trademark is distinctive when has the capability to differentiate if a consumer can easily identify distinguish it  between identical or similar products.

The ideal trademark is NEW, meaning that there are no similar ones in closely related market sectors and ORIGINAL, meaning unusual and product of fantasy, this not only reduces the risk that the registration may be refused, but serves better its purposes.

Way too often an entrepreneur is tempted to choose a trademark that describes, with words or images, the product or service: for example, GREAT FIT SHIRTS for shirts, SUPER CORPORATE CONSULTING for consulting services.

While the desire to ensure a quick and easy association between the trademark and the product is understandable, the goal of distinctiveness is reached with unusual signs and terms where the association with the product or service is not automatic.

In these cases, an initial great communication effort is repaid by a greater distinctiveness in the long term, which determines both better commercial strength, and better legal protection from trademark imitations.

In addition, the trademark must be LEGITIMATE: that is not contrary to the law, public order and morality.

Moral and religious acceptability must be given due attention as there have been cases of trademarks opposed on “ethics” grounds.

Particular attention must be paid, to the meaning of the trademark in other languages, especially if you want to register abroad!

A famous example also for the owner involved, is that of the well-known trademark "Windows Vista", refusedrejected in Latvia where the term "Vista" corresponds to a vulgar word.

A trademark is strong when it does not appear in any way connected to the product for which it is intended. Among the most striking examples of strong trademarks we can mention Apple for technological products, Diesel for clothing, Fanta for drinks.

Such a strong distinctive trademark is more easily protected because a judge will hardly believe that two competitors have chosen by chance the same or very similar fantasy name, it will be very easy to prove that the later user meant to copy and benefit from the earlier trademark strength.

A trademark is strong and distinctive when it is unique: using a trademark that contains common or descriptive expressions of the product/service, means having to live with dozens of similar trademarks sitting on the same shelf... likely the consumer will choose randomly or based on lowest price.

A trademark is strong when, thanks to the reputation achieved, it can expand its range of action and is used for an improved product or a new product. This operation is obviously easier if the trademark does not have a direct reference to a certain type of product or service.