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 law in force allows for the registration of "individual" and collective trademarks.

"Individual" trademarks are used to distinguish products or services of a specific company.

"Collective" trademarks can be registered by those subjects (natural or legal persons) in charge of guaranteeing the origin, nature or quality of products or services, it being provided that collective trademarks can be used by different subjects other than the owner of the registration, who are somehow related to him. For example, this is the case when a trademark is registered by a consortium and then used by all companies belonging to it.

The Italian law grants a protection, although a limited one, to unregistered trademarks, the so-called common-law trademarks.
Owners of common-law trademarks are granted a prior-use right, which allows them to continue using the trademark, even in the presence of registration by others of the same sign, within the territorial and product limitations of the prior-use right.
Another weak point of factual trademarks is represented by the difficulties of probative nature that are often encountered when trying to indicate the exact date of prior-use.
Not all signs can be registered as trademarks. In order to be registered, signs must comply with the following requirements:
  • lawfulness, meaning that the sign cannot be against common moral and public order and cannot be such as to deceive consumers on the origin and quality of the distinguished product.
  • novelty, meaning that the sign cannot be anticipated by an identical sign or by a sign that can be confused with it, which has been registered or used by others as trademark, company nameor sign for identical or similar products or services.
  • distinctive character, meaning that the sign must be capable of giving immediate recognition to the product or service with respect to analogue products or services on the market.
Patent registration starts with filing the application with the Ufficio Italiano Brevetti e Marchi (Italian Patents and Trademarks Office) (U.I.B.M), directly or through the Chamber of Commerce.

The application must be presented on special forms and accompanied by:
  •     a short summary
  •     the description of the invention
  •     one or more drawings related with the description
  •     payment receipt of government fees

Once filed, the application is examined by the U.I.B.M. to make sure that the invention complies with the requirements set forth by the law.

As an average, three years elapse from the filing date.
The term of trademarks is 10 years from the filing date.

After ten years trademarks can be valid - theoretically indefinitely - for successive ten-year periods of time through the presentation of specific renewal applications.

Registered trademarks are subject to forfeiture for different reasons as set forth by the Law.
In particular, it must be noted that registered trademarks can forfeit in case of no use for five years from the registration date or when use has been suspended for five years without interruption.
Within six months from the filing date the owner of an Italian trademark application can file equivalent application in foreign countries. Foreign applications are effective from the date of the original Italian application as regards the verification of novelty requirement.

Italian trademarks can be extended:
  •     to individual countries
  •     through internattional treaties
  •     through the Community Registration
In order to protect the distinctive signs used on products, including abroad, the holder of an Italian trademark can file a trademark registration application in the individual countries of interest.

In such a case the registration application must be filed with the national Patent and Trademark Office of each country involved in the extension.

The foreign registration applications will have a totally autonomous life during the examination and the granting procedures and also for the formalities that are necessary to maintain the patent and trademark alive.

The registration in individual countries is mandatory to extend an Italian trademark in those countries that have not signed the international conventions that provide for cumulative registrations. Such a procedure is recommended to extend an Italian trademark in one or more states that have signed the International Conventions in order to reduce costs.
International registration and Community registration

Two procedures can be used for the cumulative registration of a trademark in multiple countries: the Community Trademark procedure and the Madrid System for International Trademarks.
Community Trademarks are exclusive unitary instruments that are simultaneously effective in all European Union State Members.

The procedure requires a single application and a single examination as registrability, which are dealt with by the Community Office of Alicante (Spain). Once the Community Office has granted the trademark registration, the granting is published on the Official Gazette. Within the next three months, third parties can object the registration.

In case of no oppositions, or if the oppositions are rejected by the Community Office, the trademark becomes effective on the entire Community territory.
Community registration is advantageous because of easier bureaucratic formalities from application to registration. It must be noted that, although declared in a single country of the European Union, forfeiture or decadence or nullity of Community trademarks is automatically extended to all the other Community countries and the owner is definitely and irremediably deprived of his exclusive rights on the entire Community territory.

The Madrid System, that is the system used to obtain an International Trademark, is composed of two parts: the  Madrid Agreement and the Madrid Protocol.
Within the scope of the Madrid Agreement, international applications can be filed upon payment of a fixed fee, while the Madrid Protocol requires the payment of a national fee that differs from country to country.

The same application allows to extend national trademarks both to signatory countries of the Madrid Agreement and signatory countries of the Madrid Protocol. Unlike the provisions of the Community legislation, cumulative international registrations according to the Madrid System result in multiple national trademarks, each of them subjected to examination according to the procedures in force in the different countries. Once granted, each registration has an independent legal life from the other "sister" trademarks.

In view of the above, forfeiture or nullity of a national trademark does not mpair the efficacy and validity of "sister" trademarks, which will survive to it.
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.
Once the trademark has been registered, computer surveillance services allow for monitoring if conflicting trademarks in terms of contents, product class and territory are filed by third parties.

If a “competing” trademark is identified, the owner of the reference trademark can take administrative actions before relevant authorities to prevent the “competing” trademark from being filed.

Surveillance is fundamental in those countries (including Italy) where the owner of a prior trademark cannot make any claims against “competing” trademarks that have been filed successively, if the use of the trademark on the market has been tolerated for a certain period of time (five years for Italy).
The information that a “competing” trademark has been filed by third parties is considered as necessary and sufficient for the owner of the reference trademark to take actions against the “competing” trademark in due time to prevent its registration for five years.
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