Why register a trademark?

Italian and Community Trademark Attorney

The brand offers a reliable reference point for consumers. The trademark is the image of your company – it allows consumers to distinguish your products and/or services from those of other companies that operate in the same business sector.

A trademark can be constituted with one or a combination of the following elements:

A name, a word, a logo, a symbol, a design;
Non-conventional trademarks based on a color, a sound etc..

A registered trademark can be distinguished with the following symbols:

™ the trademark has been filed but it has not yet been registered
® this symbol indicates that the trademark has been registered.

Italian and Community Trademark Law

Renewal is possible from 6 months before the end of deadline?

		ITALIAN TRADEMARK	COMMUNITY TRADEMARK
Legal basis	Code of Industrial Property Rights – Decreto Legislativo 10 febbraio 2005, n. 30		CTMR – Community trade mark regulation (EC) No 207/2009
Madrid system – WIPO	Yes		YES
Zone	All Italy		All member states of the EU
Office	UIBM		UAMI
Classification	Nice classification (10th edition)		Nice classification (10th edition)
Multiple-class applications	Possible		Possible
Collective marks	Yes		Yes
Early use “marchio di fatto”	Yes – if the sign has acquired a certain reputation more than mere local		Not directly
Power of Attorney	Non-legalised		Non-legalised
Who can register?	Natural and legal persons		Natural and legal persons
Process of filing	– formal examination-examination on absolute grounds– no search for prior trademarks		– formal examination-examination on absolute grounds– search for prior trademarks (should an earlier mark emerge the Office will issue a letter to the parties. This is called a ‘surveillance letter’. The results of both search reports and surveillance letters are for information only)
Opposition	Possible		Possible
Opposition Period	3 months from the date of publication		3 months from the date of publication
Trademark Duration	10 years from the date of application		10 years from the date of application
Renewal	Renewal is possible from 6 months before the end of deadline		Renewal is possible from 6 months before the end of deadline
Use	5 years from the registration		5 years from the registration
Trade mark coexistence agreements	Are possible but must not mislead the consumer		Are possible but must not mislead the consumer

An Italian Trademark will be valid in the Republic of San Marino, by virtue of a treaty between the two States and may be recognised in the Vatican State. A Community Trademark is not valid within the Republic of San Marino

When should a trademark be registered?

The registration of a trademark is possible at any time. However, a trademark is a valuable good for your company – if not adequately protected, your competitors have the opportunity to take advantage of your economic and creative efforts.

Therefore, it is preferable to obtain the registration of your trademark before launching your activity and carrying out expenses that could be made vain by the presence of a pre-existing sign that creates confusion.

Furthermore, before carrying out expenses that involve Your brand – Verify that the sign you chose is available. Checking if a brand is already registered is not a legal obligation but it will protect You from potential risks. If the selected sign is not available for the products and/or services of interest, your company could be subject to legal attacks by the holders of the previously granted rights that could accuse you of forgery or unfair competition and consequently begin actions in order to impede you from using the sign in question.

An ounce of prevention is worth a pound of cure!

The registration of the trademark allows the ownership of the sign for 10 years, which is then permanently renewable in the following territories:

Italy – National Trademark Registration – protection on national territory – advised when your activity is limited to the Italian territory;
European Union – Community Trademark Registration – protection on European Union territory – advised when your activity is extended throughout different countries of the European Union;
International sphere – International Trademark Registration – protection throughout all European and non-European countries that conform to the Agreements of Madrid;
Single Foreign Countries – Foreign National Trademark Registration – Protection in a single foreign country of interest – advised when your activity is concentrated in a single foreign country.

The Italian and European Trademark Attorneys of TutelaMarchio.com are specialists of IP law, they offer technical and legal counselling in all areas of intellectual property law (Prosecution, registration, opposition, litigation, mediation, etc.).