THE TRADEMARK: A SIGN OF QUALITY
A trademark is a distinctive mark which links products to the company which makes them and distinguishes them from those of its competitors. A trademark also increases loyalty towards certain articles and helps customers to identify them more easily when they intend to make a purchase. Commercial and promotional investments imbue the brand with signals which evoke a certain lifestyle and attract customers. Exclusive use of a trademark also protects a company against unauthorised applications and imitations which cause confusion.
Registering a trademark is a vital part of the company’s marketing strategies and our firm provides support in:
- assessing whether a trademark may be registered and checking the essential requirements;
- prior searches on identicalness and similarity to avoid the risk of interference with existing trademarks;
- management of registration procedures for national, community and international trademarks;
- consultancy on registration and use of individual and collective trademarks.
After the registration application has been filed, we assist our clients through:
- effective protection of the trademark, by activating survey services which identify attempts to register identical or similar trademarks or ones potentially in conflict before they occur;
- opinions on extension of territorial protection or the product classes;
- management of the trademark portfolio (renewals, transcriptions of deeds, annotations and changes);
- legal assistance for assignment, licensing, merchandising agreements and any disputes.
What is a trademark?
A trademark is the sign which distinguishes a company’s activities from those of its competitors. It is possible to register as a company trademark «all signs which may be graphically represented, particularly words, including the names of people, drawings, letters, numbers, sounds, product shape or packaging, colour combinations or shades, provided they are capable of distinguishing a firm’s products or services from those of other firms» (art. 7 of the Industrial Property Code).
Trademarks are:
- individual when they belong to a single firm or a natural person;
- collective when they belong to associations, cooperatives or consortia which guarantee the origin, nature or quality of products or services (e.g. DOP, IGP, etc.).
What are the basic requirements for registering a trademark?
- Novelty: it must not be identical to or resemble distinctive marks which are already known or have previously been used as a trademark by third parties.
- Originality: the trademark must be clearly distinctive compared with the trademarks of other firms offering the same kind of products and services. It cannot describe the product characteristics or its common name and a common word in the sector where the company operates may not be used.
- Truthfulness: the trademark must not contain misleading indications for the consumer.
- Legality: the trademark must not break the law or go against public decency.
Which authorities are responsible for registration of trademarks?
The Italian Patent and Trademark Office at the Ministry of Economic Development receives registration applications in Italy and the Office of Harmonization for the Internal Market (OHIM) receives applications for community registration. International non-European extension is possible for countries which are members of the Madrid Union. In this case, the applications are received by the WIPO (World Intellectual Property Organization).
The registration is valid for 10 years from the application filing date and may be renewed indefinitely for further 10-year periods.
What are the risks of failing to register a trademark?
Registration guarantees the holder exclusive use of the trademark and the right to prohibit third parties from using identical or similar trademarks on similar products and services without the holder’s consent. In the case of conflict, the certificate of registration allows extremely efficient methods to be used to eliminate imitations and legally block infringements. Unregistered trademarks (i.e. trademarks which are not registered but recognised solely from commercial use), on the other hand, are exposed to the risk of undue appropriation and opposing use involves proving their existence, validity and extension through copious documentation and complex legal actions.
The registration procedure also offers the chance to test the trademark’s potential, by checking the requirements, and identify any existing trademarks potentially in conflict with it, through priority searches, thereby avoiding subsequent legal problems for a firm which has unknowingly copied a registered trademark with an unregistered trademark.