What is it and what is the brand used for?
The trademark is the distinctive sign of the goods or services of the company.
Registration gives the right to the exclusive use of the trademark, with absolute preclusion of the use and/or subsequent registration of an equal or similar trademark by others. The owner of the registered trademark is also granted judicial protection against those who have infringed his right of exclusivity through the advertising or placing on the market of a product of the same or similar kind or similar to the protected trademark.
Our team takes care on behalf of the client to carry out all the bureaucratic and legal procedures for the trademark registration in a short time.
How to obtain trademark registration?
The trademark registration is obtained by forwarding the application to the Central Patent and Trademark Office, which has the duty to verify the presence of certain validity requirements.
The legitimacy to apply for and obtain trademark registration lies with those who use it or propose to use it in the manufacture or trade of products or in the provision of services in their own company or in the company over which they have control.
What are the requirements for the registration?
All signs (in particular words, including the names of persons, or drawings, letters, figures, colours, the shape of the product or its packaging, or sounds) may be registered as trademarks, provided that they are signs:
In particular, Italian law (Industrial Property Code), provides that the trademark must be:
New
No similar or identical trademarks prior registered must exist
With distinctive ability
Trademarks may not registered (i) if they solely consist of signs which have become customary in current language or in trade or (ii) if they consist only of generic names of products, services or descriptive indications referring to them
Legitimate
It is not possible to register as trademarks: (a) signs contrary to the law, public order and morality; (b) signs capable of deceiving the public, in particular with regard to the geographical origin, nature or quality of the goods or services, or on the type of trademark; and (c) signs whose use would cause infringement of another person’s copyright, industrial property or other exclusive right
Where a trademark can be registered?
When a trademark is registeres, it acquires validity and protects its owner, but only in the State (or in the States) where the registration is requested. In particular, it is possible to register:
However, once any of the above mentioned deposit have been made, for a period of six months the trademark benefits from a right of priority, which allows the owner to register the same trademark in other States, prevailing over any registration made by third parties. It will be therefore possible to file an application for the trademark registration in Italy and then extend the rotection in other States in the following months.
How long does the registration last?
The rights related to the registration start from the date of filing of the first application for registration of the trademark and have a duration of 10 years, at the end of which the protection can be extended for a further 10 years period through the submission of an application for renewal.
The right to exclusive use of the trademark is extinguished by express renunciation and expiry, but the law also regulates the following cases of revocation: a) when the owner has not actually used it for the products and services for which it has been registered within 5 years from registration, subject to certain exceptions; b) for illegality; c) for vulgarization, which occurs when due to the activity or inactivity of its owner, the trademark has become in the trade a generic name for the product or service or has lost its distinctive capacity.
Finally, it is possible to register a trademark even before using it, provided that it is proposed to use it within a reasonable time that Italian law establishes within 5 years from the date of registration, with the important clarification seen above, i.e. that whoever does not use the trademark for 5 consecutive years after registration risks losing it, since other parties may proceed to register that same trademark in turn.
