FAQ Trademarks

What are the requirements of registrability of a trademark?

In order to be validly registered, a trademark must meet the requirements of distinctiveness, novelty and lawfulness:

  • Distinctive Character: the ability of a sign to distinguish the goods or services for which registration is sought;
  • Novelty: a trade mark shall not be confused with other earlier distinctive signs used to distinguish goods or services identical or similar to those for which registration is sought;
  • Lawfulness: signs which are contrary to law, public order and decency, as well as those signs that may mislead the public and in any case those the use of which would constitute a violation of other exclusive rights of third parties, cannot be registered as a trademark.

Why is it important to register a trademark?

  • The registration of the trade mark grants to its owner the right to its exclusive use, and therefore the possibility to ban third parties from using an identical/similar sign in respect of the same or similar products / services, if such use is able to create a likelihood of confusion on the part of consumers.
  • The trademark is a very immediate and incisive method of communication, and has a key role in influencing the choices of consumers.
  • The trademark is an intangible Property Right that affects the value of the Company.

What can be registered as a trademark?

Any sign, provided that it can be represented graphically. In particular, a trademark may consist of words, personal names, designs, letters, numbers, color tones, the shape of a product or packages (three-dimensional mark) or also a combination of the above mentioned features. The most common types of trademark are the word marks (or verbal marks), consisting of one or more words (even completely meaningless) without a graphical characterization; figurative marks, consisting of figures (in color or black and white) images, drawings – logos; and trademarks consisting of both words and figures or by wordings written with a particular graphic characterization (in color or black and white). The graphical representation, which is functional to the definition of the mark itself, in addition to the above mentioned traditional trademarks, enables to be a valid trademark also the colors, the sounds, the smells and the holograms, the location of a particular sign chart in a product or of movement, i.e. the so-called non-conventional trademarks, which are innovative solutions of protection but already existing.

What is the Nice Classification?

Every trademark must be filed indicating the list of products and services that are intended to be distinguished by the mark. For this purpose, the tool used is the Nice Classification of Goods and Services. The Nice Classification is a list of products and services divided by classes which must be used by each Country member of the Nice Agreement for the registration of trademarks. The use of the Nice Classification has the advantage to simplify the filing of trademark applications as the goods and services claimed in the application shall refer to a single classification system adopted by all the competent offices of the member Countries of the Nice Agreement.

Who can obtain an Italian trademark registration?

Any natural or legal person may file an application for registration of an Italian trademark.

Why is important to preliminarily carry out a trademark clearance search?

It is very important, before filing an application for a trademark registration, to carry out a preliminary search in order to check the possible existence of identical or similar trademarks to the sign which is planned to be filed. This prior search activity may enable the applicant to avoid future disputes on the trademark which could result in significant economic damages, or to avoid possible official refusals by those Offices which carry out an examination on the novelty of the applied mark (such as the US Patent and Trademark Office). In this regard, it should be noted that the Italian Patent and Trademark Office (UIBM) nor the European Union Intellectual Property Office (EUIPO) carry out any check on the existence of earlier rights that may invalidate the trademark.

How long does the protection granted by the registration of a trademark last?

Generally, a trade mark is protected for a period of 10 years starting from the filing date of the application. The registration can be renewed (also for a ten-year period) potentially for an infinite number of times. However, the lack of genuine use of a registered trademark for a determined period of time (which may vary depending on the regulations of the country in which the trademark has been filed) may result in its revocation. In this regard, according to the applicable regulations in Italy and at EU level, a registered mark must be put to genuine use within five years following its registration.

What is the Madrid System?

The expression “Madrid System” refers to the system set up for the filing of international trademarks. It is governed by two international treaties, namely the Madrid Agreement and the Madrid Protocol, and by the Common Regulations relating to both the Madrid Agreement and the Madrid Protocol. This system is administered by the World Intellectual Property Organization (WIPO), based in Geneva (Switzerland).

What can be registered as an international trademark?

The registrability of international trademarks depends on their compliance (or not) with the requirements set forth by the national regulations of the member Countries of the Madrid Agreement or the Madrid Protocol that have been designated by the Applicant when the application has been filed.

Who can register an international trademark?

Any natural or legal person who has the nationality in one of the member Countries of the Madrid Agreement or the Madrid Protocol, or is domiciled therein or has a real and effective industrial or commercial plant in one of these Countries. An essential condition for obtaining the registration of an international trademark is that the Applicant must be the owner of a corresponding prior national (or EUTM) trademark (basic trademark), regardless whether it has been already registered or simply filed (as for what concerns the Member Countries of the Madrid Protocol).

What is the revocation of a trademark?

The revocation of a trademark is one of the causes of extinguishment of a trademark. The revocation of a trademark may occur mostly in the following three cases:

1) when a trademark loses its distinctive character and becomes a generic term that is commonly used to indicate a particular product (as occurred, for example, with the trademark “nylon”). This phenomenon is referred to as the “vulgarization” the mark.

2) for supervening unlawfulness: that is, when a trademark, after the filing, becomes eligible to deceive the public, or if it becomes contrary to public order or decency.

3) if the trademark is not used effectively and continuously for an uninterrupted period of five years in connection to the goods and services claimed, unless this is due to a legitimate reason (for example: force majeure).

In which territories is a trademark valid?

The registration of a trademark grants protection in the territory in which the application for registration has been filed.

What can I do if my trademark is counterfeited by third parties (for example by one of my competitors)?

First of all, in order to effectively protect his own trademark, the owner shall become quickly aware of the counterfeiting activity. To this end, it is essential to activate monitoring services on your trademarks. Once ascertained the counterfeiting activity, it is possible to carry out different courses of action, including sending a letter of formal notice to the infringer or start actual lawsuits, which, however, are often lengthy and costly. For this reason, in many cases it is advisable, at least in the first place; to try to settle the matter out of Courts.

What is the purpose of the symbols ® or ™?

The symbols ® and ™ were born in the United States and normally are used next to a sign (a wording, logo, etc.)to inform the public that this sign is an actual trademark. In particular, the ™ symbol has the function of indicating the existence of trademark rights relating to one distinctive sign, when those rights arise from a use de facto or by the existence of a (pending) application of a trademark registration, while the symbol ® informs the public that the distinctive sign at issue has been registered as a trademark.

What is the proper use of the ® or ™ symbols?

As for the Italian territory, the use of such symbols (or of corresponding references such as REGISTERED TRADEMARK / TRADE MARK etc …) is optional. However, the use of the symbol ® relating to a sign that has not been registered as a trademark is prohibited. In this regard, pursuant to Article 127 of the Italian Industrial Property Code (abbr. CPI) there is a fine for anyone who affix on a product words or signs which are not corresponding to the truth and which may lead people to believe that the signthat distinguishes such product is a registered trademark. In this regard, in the United States there have been judgments issuing harsh penalties towards those who wrongfully affixed the above mentioned symbols on their products.