What is a trademark
A trademark is a word, name, symbol or device which is used in trade with goods to distinguish them from the goods of others.
All new signs that can be represented graphically can be registered as trademark, especially words, including personal names, drawings, letters, numbers, sounds, the shape of products or of packageof products, chromatic combinations and tones, as long as they can distinguish the products or services of a specific company from other companies.
Trademarks are registered for one or more classes in relation to the products and services to be distinguished. In case of conflict, the owner of a trademarks with earlier registration has a priority right against those who register and/or use an identical trademark or a trademark that can be confused with the earlier trademark.
In order to be in conflict two trademarks must be registered and/or used in relation to the same goods. Based on this principle the law admits the amiably coexistence of trademarks that designate different goods even if they are totally similar.
The Italian Patent and Trademark Office does not carry out novelty searches on trademark applications. This is why a computer novelty search is crucial before filing the application for an Italian Trademark. The search aims to determine the existence of prior art that could be in conflict with the reference trademark in terms of identity and risk of confusion.
The same need exists when filing trademarks abroad in single states or in countries that are members of international conventions.
Due to the lack of harmonisation between national and European regulations, the same trademark can undergo different procedures and evaluation criteria n different national or international offices.
The execution of an international novelty search allows the inventor to collect general information on the potential registration of the trademark in single countries or in the Union.
Moreover, a novelty search can determine if the originality of the invention can guarantee its distinctive capacity, that is the capability of being effectively recognised by average consumers.