Effective strategy to manage your trademarks and IP portfolio across Italy, Europe and internationally, tailored to your characteristics and future business goals
Support throughout the entire trademark filing and registration process: from preliminary assessments of novelty and registrability to supervision during the registration process, monitoring deadlines and managing extensions and/or renewals
Web and market monitoring and targeted legal action to prevent the registration of identical or similar trademarks and to defend your trademark against misuse that may damage your business
ANALYSIS OF REGISTRABILITY
of trademarks - existing or in the process of creation - according to the requirements of novelty, truth, lawfulness and distinctiveness
CHOICE OF MARKETS AND COUNTRIES
in which to register according to business strategy
SEARCHES
carried out for both identity and similarity, analysing possible conflicts
FILING
of the application for registration
MANAGEMENT OF OFFICIAL ACTIONS, THIRD-PARTY COMMENTS AND OPPOSITIONS
possibly received
REGISTRATION
of the trademark
SURVEILLANCES
in public records, at the customs level, on the web
DEFENCE STRATEGY
through online brand protection and legal assistance
MAINTENANCE
according to the specific deadlines of individual country registries
TRADEMARK RENEWAL
according to the specific timelines of individual registries
Without a proper trademarks protection strategy, you may run the risk of counterfeiting or legal obstacles preventing you from continuing your business or expanding into certain markets.
Trademark registration has several functions, including:
⦁ Exclusivity, securing the right of exclusive use
⦁ Creating a distinct identity, allowing others to identify you
⦁ Quality assurance of your products, because they are traceable back to you
⦁ Attracting attention, often even outside the sector of origin
We support our customers by declining the service according to their needs and dimensions
Do you want to promote and protect your trademarks?
We can help you protect your intangible value and gain a strong competitive advantage
FAQ
What characteristics must a trademark have in order to be registered?
The requirements for trademark registrability are: novelty, distinctiveness, lawfulness and non-deceptiveness. In general terms, it must therefore be:
- New: it is not preceded by another identical or similar trademark or mark for the same or similar goods/services in the same region.
- Distinctive: it does not consist exclusively of commonly used marks, generic product names or descriptive indications of the characteristics of the goods and/or services, e.g. the type or origin.
- Lawful: not contrary to the law, public order, decency. Marks whose use constitutes an infringement of another’s copyright, industrial property right or other exclusive right of a third party, or an offence against decency or institutions are not registrable.
- Non-deceptive: i.e. not misleading as to the characteristics and origin of the marked product and/or service.
When can I use the ® symbol for registered trademarks?
The ® symbol communicates that the trademark is registered. It can therefore be affixed without penalty once the registration certificate has been obtained.
What do the registration classes represent and how many are there?
A trademark is registered with respect to certain goods and/or services. Goods and services are divided into product classes using the Nice Classification. The Nice Classification has 45 classes, of which the first 34 consist of all existing types of products, and the next 10 (35 to 45) group all types of services that can be rendered.
When must the trademark be renewed?
An application for renewal of a trademark registration may be filed within 12 months before its expiry in Italy or within 6 months after its expiry in the European Union.
The application for renewal may also be submitted after the expiry date by means of a late application, but in this case a surcharge must be paid, and in any case within six months of the original expiry date. Beyond such date the trademark registration is no longer renewable. If the trademark owner is interested in maintaining its protection, they must then file a new application.
Who can register a trademark?
Italian law provides that a trademark may be registered by anyone who uses it or proposes to use it in the manufacture or trade of goods or in the provision of services by their company, or by companies over which they have control or which use it with their consent.
A person meeting these requirements is entitled to file the application and may do so directly with the Chamber of Commerce, or through the support of a qualified consultant licensed in the Register of Industrial Property Consultants.
What are the requirements for registering the trademark in the special registry of historical trademarks of national interest?
Registration is permitted for owners or exclusive licensees of trademarks that have been registered in Italy for at least 50 years or for which continuous use can be demonstrated for at least 50 years. Moreover, in order to be registered, the trademarks must be used for the sale of products or services made by a national manufacturer of excellence, historically linked to the national territory.
Can I register the shape of my product as a trademark?
Yes, both Italian and EU law provide for the possibility of registering marks consisting of the shape of the product or its packaging as a trademark, provided that it distinguishes the products/services of one company from those of another, and that it can be represented in the register.
However, marks consisting solely and exclusively of the shape or other characteristic cannot be registered as trademarks if:
- It is imposed by the very nature of the product, i.e. its typical/standardised product form
- It is necessary to achieve a technical result, i.e. the form has a technical purpose or otherwise performs a technical function within the product
- It gives substantial value to the product, and thus is likely to influence the public’s purchasing choices
What is the EU collective mark for?
A collective mark is a distinctive mark whose purpose is to inform the consumers about the quality standards of certain goods and services and that the manufacturer or service provider belongs to a specific association that assesses the quality standards and has granted them the right to use such a mark. The collective mark is filed together with rules for its use that forms an integral part thereof. The rules for use must specify the persons authorised to use the mark and the conditions of membership in the association. It may also include the mark’s conditions of use.
The EU Trademark Regulation defines collective marks as marks “capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings”.