It is very important to carry out a trademark search to check whether the mark you have chosen is not already protected. Duly registered intellectual property attorneys know the law in depth, they have access to pay databases worldwide and also analyse the similarities with other trademarks from all points of view (graphic, phonetic, etc.). The UIBM does not carry out any trademark searches during the verification before the publication.
Failure to analyse earlier trademarks may also lead to a claim for damages by the owners of an earlier trademark.
Even after the registration of the trademark, it is desirable to continue monitoring the trademark by means of our watching service which monthly communicates the similar or identical trademarks which have been published, ensuring that the deadlines for filing opposition can be met.
Lack of an identical or similar mark to distinguish identical or similar products and/or services within the same class.
Capacity to distinguish a product or service from that of others.
Trademarks that may offend sense of morality or public order cannot be registered.
The owner of the registered Trademark has the right to use it to distinguish his/her own products and/or services, and to forbid its use by others for identical or similar products and/or services within the same class of registration.It may be assigned or a licence for its use may be granted.
The phases after filing
The Office checks whether formal and legal requirements are met. In Italy the UIBM does not check possible conflicts with earlier trademarks which have already been filed / registered. If the Office believes that defects are present, a litigation starts and a reply can be submitted. An Appeal is possible against any decision.
If issues are not raised after the verification, or if these issues are overcome, the trademark is published in the Trademark Journal. From this moment, the owners of earlier rights may file opposition within 3 months.
POSSIBLE OPPOSITIONS AND FINAL GRANT
In case of opposition, you may defend your trademark by trying to reach an agreement with the opposing party by reducing the goods/services claimed or letting the Office decide.
If oppositions are filed you may decide to defend your trademark, to reach an agreement with the opposing party, to reduce the list of the goods and services claimed or to let the Office decide. An opposition stops the trademark registration process.
If no opposition is filed, the trademark follows the normal registration process and is granted within 12 months from the filing date.
Before the final grant it is not possible to use the symbol ®, the TM can be used only.
Protection starts from the filing date.
Only as an example, we will quote some of the possible exclusions
- coats of arms, marks, emblems, of public interest, unless there is an authorization from competent authority
- marks which may deceive the public about geographical origin, nature or quality
- images of people without prior consent, names of people other than the applicant
- marks which are identical or similar to a well-known mark if it can confuse the public
- marks which exclusively consist of generic names
- marks which exclusively consist of the natural shape of the product
- marks which are commonly used in everyday language or constantly used in the market
It is a distinctive mark which is used to distinguish products and/or services which are produced or marketed by a natural person or corporation.
Trademarks are those marks that can be graphically represented (words, including first names, drawings, letters, numbers, sounds, shape of the product or of its packaging, combinations, colour shades), provided they can distinguish the products or services of a company from those of other companies.
It is used to guarantee the origin, nature and quality of certain products or services.
It is granted either to a natural person or corporation that takes up the position of guarantor of the origin or quality of products or services (e.g. Trademarks of well-known consortia, cheeses, hotels, etc.).
A collective Trademark differs from an individual trademark, as it may contain indications concerning geographical origins, because it must guarantee a range of qualities which are often related to geographical, historical and environmental factors.
10 years, indefinitely renewable.
The Trademark can be objected to if it is not used for a period of 5 years starting from the registration date.
It allows to be granted, with one single application, a Trademark which is valid on the whole territory of the European Community.
Possibility of opposition
Within three months from publication, those who think they have rights on that name and do not want it to be registered can oppose providing evidence of the prior use of the Trademark on which the opposition is based.
The duration is of 10 years from the date of filing. It can be indefinitely renewed. The Trademark can be objected to if it is not used for a period of 5 years starting from the registration date in at least one Country of the European Community.
The Trademark grants the owner the right to use exclusively that name in the whole territory of the European Community.
EUIPO (European Union Intellectual Property Office) located in Alicante (Spagna)
The procedure of international registration can start only after filing a National Trademark in one of the Countries that are party to the Madrid Agreement or a Community Trademark. It is possible, with one single application, to designate Countries that are party to the Madrid Agreement and/or to the Madrid Protocol.
Possibility of opposition
It depends on the current legislation in the designated countries.
The duration is of 10 years from the date of filing. It can be indefinitely renewed. For the first 5 years, the International Trademark is linked to the life of the original Trademark.
The Trademark grants the owner the right to use exclusively that name in all the designated Countries.
WIPO (World Intellectual Property Organization)