Today, trademark registration holds strategic importance for a company. Our extensive experience in the field allows us to state that it is a precious resource to be protected and enhanced, representing one of the main elements of a company's image and providing, in the eyes of customers, guarantees of quality and reliability.
What is a trademark?
A trademark is a sign that distinguishes products or services, manufactured or distributed by an enterprise, from those of other companies. According to Art. 7 of the Codice della Proprietà Industriale (CPI - Industrial Property Code), all signs capable of being represented graphically may be registered: words (including personal names), designs, letters, numerals, sounds, the shape of the product or its packaging, color combinations or tones. Thus, a sound can be registered by representing the musical notes that compose it on a staff.
Trademark registration: why is it important?
It is worth noting that the trademark often attracts more than the product itself, and consumers place trust in it even before knowing a new product. Merchandising is a clear example of how a trademark, born with the primary function of indicating the origin of a product or service, becomes an autonomous asset of great value.
Registering one's trademark is of truly significant strategic importance; it enhances reputation and allows for the protection of an asset destined to increase its economic value over time. It is no coincidence that in business transfers, distinctive signs often represent the most important and coveted asset.
Trademark registration: the prior art search
Before registering a trademark, one must choose how to file it, whether as a word mark or a figurative mark. It is then important to carry out a novelty search to ensure that the chosen distinctive sign has not already been registered by others. Furthermore, it must be emphasized that renewal is necessary every 10 years starting from the filing date of the registration application.
Once the preliminary analysis has been carried out with care and, as is always recommended, with the help of a consultant expert in the field, one can proceed with the filing of the registration application.
Classes of products and services: what are they?
Another aspect to consider during the registration phase is the choice of classes of products and services for which the distinctive sign will be used, which must be precisely described in the registration application. At the time of filing, it is important to carefully select the products and services of interest using the classes of products and services of the Nice Classification.
Who can proceed to register a trademark?
Art. 19 of the CPI specifies that "a registration for a business trademark may be obtained by those who use it, or propose to use it, in the manufacture or trade of products or in the provision of services of their own enterprise or of enterprises which they control or which use it with their consent." The applicant may be either a natural person or a legal entity.
Registration of collective marks
A collective mark may be registered by associations of manufacturers, producers, service providers, or traders. It must, therefore, be registered by entities possessing an adequate structure to guarantee effective management, and it is granted for use to all manufacturing companies that submit to rules established by the owner. The legal form of a consortium is considered suitable to ensure the effective management of the distinctive sign, as it allows for the achievement of operational results difficult for a single enterprise to obtain, and offers individual enterprises much higher corporate visibility compared to individual marks, especially for products regulated by precise specifications of authenticity.
Important
Anyone who registers a trademark must use it or at least propose to use it, directly or indirectly, within five years of registration. Should this not occur, the distinctive sign, even if granted, lapses for non-use. However, a natural person could always implement said use by licensing it to a company if they are unable to use it personally.
How does trademark registration take place?
The applicant may file the application personally or appoint a representative who must be chosen from among industrial property consultants enrolled in the specific professional register held by the Ufficio Italiano Brevetti e Marchi (UIBM - Italian Patent and Trademark Office), or from among lawyers enrolled in their respective bars. A representative is mandatory only when one does not have a production facility or a legal domicile in Italy.
The appointment of the agent may be made in the filing application (in which case the application must be signed jointly by the applicant and their agent) or by a separate act, which may consist of a notarized power of attorney or a letter of appointment.
A notarized power of attorney consists of a document signed before a notary by which an agent is authorized to follow every procedure before the UIBM without having to specify the object or which applications (patent, design, model, or other) the power of attorney refers to.
The letter of appointment can be general or specific, and the latter can be single or multiple:
- general: the mandate concerns the entire process for obtaining the requested registration, as well as the handling of everything concerning potential litigation.
- specific: the services the consultant is required to perform are indicated in detail (domiciliation only, partial or total application filing process, consultancy in case of opposition, appeal to the Board of Appeals against refusal measures, etc.).
- single: concerns a single application.
- multiple: can concern multiple applications, which must always be indicated in the letter.
Italian or European trademark: what are the differences?
So far, we have illustrated the registration procedure for an Italian distinctive sign, but what are the differences with the European one?
In Italy, it is registered at the UIBM and is valid only and exclusively on Italian territory.
The European trademark, on the other hand, is registered at EUIPO (European Union Intellectual Property Office) and is valid throughout the territory of the European Union, equivalent to a bundle of 28 national trademarks registered in the individual countries of the European Union.
This last aspect must be carefully considered when performing a prior art search, as even a national distinctive sign registered in any one of the European Union countries can prevent the registration of a European Union trademark.
In such a case, rather than proceeding with the filing of a European Union application, it might be necessary to perform a plurality of national trademark filings in the European Union countries where protection is desired.
Both registration procedures benefit from the so-called trademark right of priority.
In practice, filing a trademark registration application, whether national or community (even foreign), if performed as the first filing, grants its owner a right of priority lasting 6 months from the date of the first filing to file one or more trademark registration applications in one or more of the 173 States adhering to the Paris Convention.
How to choose? Our advice
If your current or future company (start-up) operates or will operate only and exclusively in the Italian market, it will be appropriate to proceed with registration only at the national level.
If, conversely, the enterprise intends to operate or already operates within the European scope, registration of its trademark at the European level will be far preferable.
The suggestion for companies operating in e-commerce, which presumably covers at least the entire territory of the European Union, is to choose European-level trademark registration from the outset.
Conversely, if your activity can never operate beyond national borders, registering an Italian trademark is far preferable. It will, however, always be possible to register a European Union trademark or an international trademark at a later date, although the priority of the Italian trademark cannot be claimed.