Trademarks
All signs, in particular words, including personal names, or figures, letters, numbers, colors, shape of the product or its packaging, or sounds may constitute a trademark, provided that such signs are suitable to distinguish the goods or services of one firm from those of other firms.
A trademark must:
- Have distinctive capacity: it cannot be limited to words descriptive of the covered goods or the type of activity carried out by the trademark owner.
- Be lawful: it cannot be in conflict with public order and must not violate the provisions of the law (for example, a mark that is against morality is refused.
A trademark can be distinguished in :
- word mark, which consists only of words
- figurative mark, which consists of a figure or a reproduction of real or imaginary objects. For filing purposes, a combined trademark (consisting of words and figurative elements) is also considered figurative
- figurative mark, which consists of a figure or a reproduction of real or imaginary objects. For filing purposes, a combined trademark (consisting of words and figurative elements) is also considered figurative
Recently introduced into the national discipline there are sound, motion, multimedia and holographic marks.
Finally, there is the collective mark which is that trademark that distinguishes goods and/or services of several companies that performs a guarantee function for consumers, because it guarantees that the products or services bears certain characteristics regarding their origin, nature or quality.
In fact, an application for a collective mark requires the filing of a Regulation of Use establishing who and how can use this mark.
The collective mark is used by several subjects other than the owner, who usually does not use it. The owner can be any subject who performs the function of guaranteeing the origin, nature or quality of certain products or services, and the required quality standards and related controls have to be provided for in the specification, as well as the indication of the person in charge of the control same. Once the registration has been obtained, the owner of the trademark will grant its use to those who request it and the latter will use it legitimately in compliance with the filed Regulations for Use.
Geographical areas
TRADEMARKS IN ITALY:
In Italy, a trademark is registered with the Italian Patent and Trademark Office – UIBM/Rome and is valid in Italy only. Trademark protection is granted for goods and/or services identified in the relevant application. As in most foreign countries, it is possible to file a trademark in several classes of goods and/or services (Nice Classification).
It is not possible to broaden the classification of a registered trademark, so additional goods and/or services can only be included in a new trademark application. The registration process takes place through the filing of the trademark application at the UIBM who, after ascertaining the formal requirements and the absence of absolute impediments to registration (the trademark must be graphically representable, distinctive, not be deceptive or contrary to the law , public order or morality), agrees to the publication in the Italian Bulletin of trademarks.
Possible oppositions may be filed at the UIBM by legitimate and interested third parties within the deadline of three months from the date of publication of the application.
Once the opposition period is closed or, in the case of opposition, once the opposition proceedings have expired, the trademark is registered and the Office issues a trademark registration certificate. From that moment on, the trademark can be used in association with the symbol ®; otherwise, while still in the application phase, it is possible to use the sign ™ which means “trade mark” and can be applied on all registered and unregistered trademarks, with reference to the marketing of products. This symbol is used to indicate the possible existence of rights (de facto use, pending application).
EUROPEAN UNION TRADEMARKS:
The European Union Trade Mark (formerly Community Trade Mark) is registered at the European Union Intellectual Property Office (EUIPO) in Alicante and is valid throughout the EU, i.e. in all member countries of the EU (automatically extending to new entries in the EU). The registration procedure is centralized and takes place through the filing of a single trademark application at the EUIPO: this represents a clear advantage, but also means that the application can potentially be the subject, in each of the EU countries and the EUIPO, of possible conflicts with any earlier trademarks with which the requested trademark could be confused.
Also for this reason, the preliminary trademark search, carried out before filing the European Trademark application, is a valid tool for defining the best protection strategy to be implemented: if particular critical issues should emerge connected to possible potentially conflicting earlier trademarks, the owner may consider the alternative option of registering its trademark at a national and/or international level, depending on the case.
Similarly to the Italian trademark, the European Union Trademark must comply with formal and substantial requirements which shall result such in all EU countries, also in consideration of all the respective official languages; subsequently to the examination, in case of a positive result, the trademark application is published in the EU Trademark Bulletin. In absence of oppositions, or third party observations, the trademark is registered and the registration then published. The registration process ends with the issue of the trademark registration certificate.
INTERNATIONAL TRADEMARKS:
The registration of an International Trademark is granted by the World Intellectual Property Organization (OMPI/WIPO World Intellectual Property Organization) based in Geneva. Regulated by the Madrid System, it consists of a filing procedure which, through a single application, allows the designation of several Member States adhering to the Madrid System. The International Trademark application is always based on a previous corresponding national or European Trademark application/registration; therefore, depending on the case, it must be filed with the national trademark office of the national country of origin or with the EUIPO, which offices will then notify it to WIPO. WIPO is responsible for formally examining the application, registering the trademark and issuing the registration certificate; WIPO will then notify the registration of the trademark to the individual national Trademark Offices of the designated countries, in which the trademark will begin the registration process as a national trademark application, according to the local regulations in force.
In absence of refusals or oppositions, the trademark will be considered registered in all designated countries after a period which generally varies from 12 to 18 months.
An International trademark registration can be extended to further Member States (subsequent territorial designation), without time limits.
For the first five years of life, the international trademark follows the fate of the national or European one on which it is based. If in this period the exclusivity of the basic national or European trademark is lost, the International trademark also loses effectiveness, without prejudice to the possibility of converting its validity nationally in the designated countries of interest following a specific procedure.
