Pedrini & Benedetti patents firm

TRADEMARKS

A trademark is the distinctive sign of the company products and/or services.

Also the actual use of the Trademark confers rights to the user but within the territorial, "quality" and "quantity" use limitations.

When registered, according to the unitary aspect, the trademark is the most prominent among the company distinctive signs (Company name, Sign, Domain Names, see relative section), so that the owner of a Registered Trademark has the right to use the name element regarding the entire business scope of the Company.

This is one of the advantages of Registering the Trademark, the others deriving from the certain date of assumption of the sign, the exclusive territorial utilisation in the sectors of the claimed products and/or services, implementation of start-up it represents abstraction and independent monetary ability of the start-up value it allows.

Services Further information

We, as a firm, offer the following dedicated professional services as regards filing, granting procedure of Company and Service Trademark Registration Application in Italy and abroad:

Appointment for in-depth analysis of the contents illustrated in the special section, strictly reserved and limited to the professional secret regardless of the completion of the process, the characteristics of the company trademark registration institution related to the specific subjective characteristics of the client as well as the objective characteristics observable by experience from the perspective and provided contexts.

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Preliminary assessment on whether the registration ability requirements are generally met i.e. assuming that the novelty requirements are met (except in case of verification as provided for hereinafter).

Quotation for filing the application with estimation of the subsequent procedure.

Strategic assessment as regards the feasibility, substantially with respect to the scope and time of possible pre-utilisation of the Trademark by the Client, of the application in the specific case of priority search for preparation for filing the application; in the sense that, for a new adoption Trademark, suitable novelty search is always advisable if not absolutely necessary; while as regards a Trademark that the Client has been actually utilising over time, especially after a long period of time, the Trademark is already on progress and difficult to waiver after the result of the search (always suitable) and one may rely on the fact that any interferences, if any, would have already been observed at pre-utilisation territorial level in case where substantially coincides with the territory of registration subject of application.

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As a function of the above, performance of priority search for preparing to the trademark filing procedure, identifying possible equal or similar signs, with respect to the identical or similar products or services, that may affect the validity thereof and lead to infringement of third party interests.

Executing the search in the reference territorial scope register where the client intends to extend the registration, even considering the future potential, simultaneously regarding possible descriptive semantics that the name element may assume in other languages of the countries of reference, such as the specific Legal Systems or which are included in supranational registers, with particular reference to the community registration of the trademarks valid all over the European Union.

Search regarding the freedom of utilisation nd possible registration of a trademark in specific countries, partly equivalent to the previously described search services, which can be only partly overlapped with respect thereto, in particular when they have South-Eastern Asian countries as reference and especially the People's Republic of China, where it is very common (if not usual) to find Italian Trademarks already registered by local organisations. Considering the prestige of the Made in Italy products, hence the Italian words, names and patronymics, these local organisations systematically register a large number of the aforementioned, presumably obtaining them form national registers or publications in general. These organisations subsequently oppose the registration by Italian companies in China and demanding advantages (once acceptable but currently extremely expensive) so as to allow the registration in question. In this context, when approaching the Chinese Market, it is usually advisable "to invent" a new special trademark. It is in this context that one carries out free search to implement a word, with the aim of verifying whether the new contingently proposed sign will not be subject to opposition.

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Collaboration to draft new trademarks, even at graphic level, especially after priority search and freedom to operate, with the aim of adapting suitable differentiation and maintenance of the start-up of the signs pre-adapted by the Client.

Transliteration of the trademarks in Latin as well as other characters and alphabets, even in this case with special reference to the ideograms of the Chinese alphabet, with reference to which the Latin characters may be transliterated both at semantic level, where applicable, as well as the phonetic one; on the latter option there are usually many alternatives.

Drawing application filing forms with reference to Italy, paying taxes and relative chamber rights fees, filing, providing the Client with certificates proving the filing.

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At the same time, should the client intend to extend the application abroad, illustrating the international extension institutions to the Client, quotation for filing and procedure fees.

Institution choice assessment (Community trademark, International trademark) and/or national trademarks so as to obtain the extension as a function of the contingent subjective and objective needs of the client.

Translating the list of products and/or services to be distinguished and any text contingently deemed necessary and suitable.

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Drawing application filing forms with reference to foreign countries, paying filing fees, directly or through suitably certified correspondents, where deemed necessary or suitable, proving the client with certificates proving the filing.

Managing examination procedures, examination and study of the official actions issued by the examiners, information and illustration to the Client, consulting the client as regards strategies and contents for the response, drafting and filing responses with administration and possibly relative tax compliances.

Possible nationalisation of the application when the conventional procedure, in particular the community one, makes it suitable considering the negative result of passive opposition or dependent strategic choices.

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Meeting requirements regarding the preparation of the registration certificate upon attainment thereof and payment of the relative fees.

Assistance for passive opposition actions undertaken by third parties against the registration application in Italy, abroad as well as at community level, with reference to any procedure regarding national registers.

Assistance for active oppositions when third parties take filing actions deemed infringing with respect to the registrations subject of prior or ensuing request in Italy, at community level, with reference to any procedure regarding national registrations.

Compliances to prove the implementation of the Trademark when requested by the reference legal systems.

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Services for monitoring national registers of any legal system and supranational organisation worldwide to continuously verify possible filing of registration applications by third parties as regards trademarks that are equal or may be confused with those of the Client.

Expiry reminder for procedures and renewals.

 

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Types of trademarks

There are various types of trademarks: solely denominative trademarks, also referred to as phonetic trademarks, denominative trademarks obtained with distinctive graphics, figurative trademarks, complex trademarks in which figurative elements obtained with particular graphics and/or figurative elements are extrapolated variously, combining various colours, three-dimensional trademarks, harmonic trademarks, sound trademarks and even smell trademarks.

Regarding these types of trademarks, most of the Trademarks adopted by the companies are denominative trademarks and figurative trademarks, or various relative combinations (called "logos"). Three-dimensional trademarks (through which the trademark institution nears other industrial property institutions, i.e. drawings, models and design) are less common.

 

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Relativity principle: Products and services commodity classes

Regardless of the type of trademark in question, the relative registration is subjected to classification for the commodity classes of the products and types of services, according to the International classification of the products and services with the aim of registering trademarks (the 1957 Nice agreement, universally summarily referred to as ”International classification”). This classification currently contains 45 classes (34 products 11 services), one or more of which (usually with taxation according to the relative number) the applicant has to select the scope of extension of the products and/or services that the trademark itself is intended to identify upon filing the registration application.

 

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Trademark validity requirements

Regardless of the type of trademark, it is subjected to meeting the law and regulatory requirements; these requirements are:

  • The novelty step › equivalent to the fact that the trademark, or a sign that can be confused with respect thereto, has never been registered or used by others to distinguish products and/or services of the same category or similar categories. A major aspect regarding the novelty step with respect the institution of the registered trademark is represented by the fact that the pre-utilisation of the sign by the applicant does not jeopardise the registration, as it instead occurs for invention and utility model patents as well as for models (industrial designs) through at a lower level. Another major difference between the novelty step as regards trademarks and the same concept as concerns other industrial property institutions (patents, models and designs) lies in the fact that as concerns trademarks, the novelty step is limited to the relation with the National or Supranational Legal System, while as concerns the other industrial property institutions (patents, models and designs, see relative sections) it is related to the prior information at global level.
  • Distinctive capacity › equivalent to the condition that elements describing products and/or services it is intended to distinguish do not prevail in the trademark. This due to the fact that it would create an unjustified and inadmissible monopoly on the lexical or symbolic semantic regarding the reference product or service.

 

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Rights conferred by trademark registration

Rights conferred by company trademark registration consist in the right of exclusive use of the trademark. The owner has the right to prohibit utilisation of the following by third parties:

  • a sign identical to the products or services trademark identical to the one subject of the registration in question;
  • a sign identical or similar to the registered trademark, as regards products or services that are identical or similar if there arises the likelihood of confusion for the public - also consisting in a likelihood of association between the two signs - due to the identity or resemblance between the signs and the identity or affinity between the products or services;
  • a sign identical or similar to the registered trademark as regards products or services even in the absence of affinity, if the registered trademark is equivalently renowned and if the improper use of the sign allows obtaining unlawful advantages from the distinctive character and the fame of the trademark or it jeopardises the same.

The owner of the trademark may in particular prohibit third parties from fixing the sign on the products or its packaging; offer the products or sell or keep them for such purposes, or offer or provide the services distinguished by the sign; import or export products distinguished by the sign; use the sign in business communications and advertisement.

 

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Territoriality

A common characteristic of trademarks registered in any national legal system and supranational convention is:

  • Territoriality › i.e. the active validity of the trademark solely as regards the territory of the due legal system granting the registration, or the supranational organisation designated to execute the registration procedure with reference to the territory of the member countries.

Thus, the need to take trademark registration initiatives in several countries / legal systems / supranational organisations, where the registration needs and/or opportunities go beyond the boundaries of a single country supplements the principle of territoriality.

 

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Priority right

Functionally to this need the Paris Convention for the Protection of Industrial Property, referred to as Paris Union Convention, was signed in 1883. The Convention implements the Priority Right (in the European Union) according to which an individual or legal entity owner of an industrial invention patent application (this also applies to utility models, drawings, models and trademarks), citizen of one of the member countries (recently basically all countries worldwide) has twelve months from the date of filing of the first patent for the extension of the patent application, i.e. file similar applications, in any (one or more) of the other countries member of the Convention. The effect of these similar applications (of this family of applications) shall be in force as of date of filing of the initial application, the so-called right of priority provided for by the Convention.

An important factor is given by the fact that as concerns the trademarks, failure to use the community priority does not lead to inherent limitations as concerns the registration applications of the same trademark even in other countries after the expiry of the deadline, given that - as mentioned - the prior use of the sign by the same applicant and thus also the publication of the relative registrations does not affect the novelty step. On the contrary, as concerns invention and utility model patents, as well as the drawings-models (industrial designs), failure to utilise the community priority, or at least failure to extend the application in other countries prior to the publication of the initial one, leads to devastating effects as regards the novelty step of the subsequent applications (see relative sections).

 

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Registration of international trademarks

The 1891 Madrid Agreement on the international registration of trademarks, with the various reviews and 1996 supplementary integration, as well as the European Union Regulation, which grants the community trademark (EC regulation n° 40/94 of the 20 December 1993 Council) should be taken into account considering the Paris Union Convention.

The 1981 Madrid Agreement on the registration of international trademarks, alongside the various reviews thereof and the 1996 supplementary protocol, allows the owners of a trademark registration in one of the member countries - currently 186 from all continents - to register through national offices or directly at the WIPO (World Intellectual Property Organization) in Genève, one registration application (though different in terms of formulation and taxation depending on the grant level in the reference country outlining any plurality of the member countries. This is deemed as the national application in each of them. The international procedure provides for that the submission of the application by the collecting organisation to the administration in the designated countries and - in case of objections thereby within a given deadline - the relative notification to the Applicant who thus has the duty to solve any problems that may arise with respect to the specific reference administration (no longer with the intervention of the Collector Organisation).

 

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Community trademark

The European Union Regulation, which guarantees the Community Trademark (EC Regulation n° 40/94 of the 20 December 1993 council) allows communitarian and extra-communitarian legal entities to file one registration application at the Community Collection Organisation, constituted by the Alicante Office for Harmonization in the Internal Market in Spain and attain one registration valid in the entire European Union. It should be observed that the international and community registration can be extrapolated, in the sense that a communitarian registration may represent the basic registration for an international procedure. On the contrary, the international procedure may indicate the European Union as a whole through the Community Trademark, as the territorial designation just like in other single countries.

Thus, upon observing the determinations and initiatives required to obtain the trademark based on the relative validity requirements, the territorial principle implies the need to conceive a trademark extension policy obtains the maximum results with minimum expenses. In addition, it should meet the requirements of the reference national and supranational legal systems, in that in the specific sector may vary from one country to another. We, as a firm, offer these services as provided for by the dedicated section.

 

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F.A.Q.

› What is a trademark?

A trademark is a sign used to distinguish products/services of a company from that of other companies. It indicates the consumer the source of the product/service.

› What can be registered as a trademark?

All sign that can be represented graphically, in particular words, including people's names, drawings, letters, figures, sounds, the shape of the product and packaging thereof, the combinations or colour tone. The trademark may be denominative: if made up of words only; figurative: if made up of graphic elements only; complex: if made up of an assembly of verbal and graphic elements.

› Who can own a trademark?

A trademark can be owned by an individual or legal entity or even several people. One does not need to own a company or VAT code in order to have a trademark.

› What are products and services?

Products are goods that can be sold. Services are activities performed to meet a need.

› Which requirements should a trademark have to be valid?

A trademark must be new, i.e. different and free of likelihood of confusion with respect to other existent trademarks with reference to the same categories of products and services. It should be original, i.e. have the capacity to distinguish the product/services and be non-obvious or descriptive with respect to the characteristics of the product/services it refers to. It should be legal, i.e. it should not be against the public moral or order or deceitful with respect to the consumers.

› How much the trademark protection last?

The registered trademark has a 10-year validity from the date of filing. Registration may be renewed to infinity for another 10 years.

› When does the trademark validity start?

Trademarks have validity from the date of filing.

› Which rights does the registration of a trademark confer?

Upon registration, the Italian Patent and Trademarks Office also guarantees the owner monopoly on the sign, thus an exclusive right to use the sign in question by the user. According to this exclusive right, the owner of the registered trademark may prevent others from using identical or similar trademarks for identical or similar products.

› What is the meaning of the obligation of utilisation of a trademark?

The law provides for that the registered trademark must be used. Failure to utilise the trademark uninterruptedly for five years exposes the trademark to the risk of expiry.

› Is trademark registration compulsory? Can the trademark be used before being registered?

Registration of trademarks is not compulsory. If a trademark is utilised without prior registration, the registration in question is called a "de facto" trademark which has a limited protection with respect to the registered trademark. Actually, it is protected in the so-called pre-utilisation limits, i.e. within the limits of the territorial within which the trademark is used up to that moment. The owner of a trademark shall not oppose the national registration of this kind of trademark but only continue using the de facto trademark thereof in the same territory where it has been utilised up to then. The owner of the registered trademark may instead prevent the use of the de facto trademark beyond the territorial limitations outlined by pre-utilisation.

› Can one use a trademark before it is registered?

Definitely, as mentioned in point 10), trademark registration is not compulsory. However, using a trademark without registering it exposes the user to the risk that someone else files the trademark, thus preventing registration for those that created and used the trademark used previously.

› Is it compulsory to use the TM and R symbols?

No. As a matter of fact, the R symbol can be used only when the registration is granted by assigning the relative grant number. The TM symbol, which is the acronym of "trademark", instead indicates that the trademark was filed hence it can be utilised even if the trademark has not yet been registered.

› When choosing a trademark, how do I know whether it has already been registered?

The only way for ascertaining whether there are trademark applications or registrations similar to the one would like to register is carrying out the so-called "priority search". It is not compulsory but advised so as to limit the risk of having to be subjects to actions by owners of prior trademarks. The Italian Patent and Trademarks Office does not carry out priority search at the time of filing, hence the fact that the trademark is not opposed at the time of filing does not mean that there are no identical or similar priorities.

› What type of protection can the filing of the trademark have?

Trademarks offer a territorial protection, i.e. referring to the territory in which the trademark is registered.
The Italian Trademark shall have validity in Italy (as well as San Marino and the Vatican City).
The Community Trademark is valid in all European Community Member Countries.
The International Trademark is valid in all Madrid System member countries designated at the time of filing the application.

› Where can I file the registration application of a national trademark?

The registration application is submitted to the Chamber of Commerce which forwards it to the Italian Patent and Trademarks Office, at the Italian Ministry of Economical Development (www.uibm.gov.it).

› Where can I file the registration application of a community trademark?

The registration application must be sent to Office for Harmonization in the Internal Market (OHIM) with offices in Alicante in Spain. (www.oami.europa.eu).

› Where can I file the registration application of an international trademark?

The registration application is submitted to the Chamber of Commerce which forwards it to the Italian Patent and Trademarks Office, at the Ministry of Economic Development, which shall in turn submit it to WIPO (World Intellectual Property Office) or it is directly forwarded to the WIPO. The application for registration of the international trademark may be filed only according to a national trademark application/registration. (www.WIPO.ORG.)

› Can I oppose the registration of a trademark?

The owner of the priority trademark may oppose the grant of the registration of a trademark identical or similar to his/hers claiming products or services identical or similar to those of the trademark claimed thereby. The deadline for filing opposition is three months from the date of publication of the application.

› Can a trademark be transferred?

The trademark may be transferred, even independently from the transfer of the company and even only for part of the claimed products and services.

› Can the trademark be transferred as a licence?

The trademark may be granted as a license for all or only some claimed products and services.