60 years protecting distinctive capacity
Protecting
investmenthistorymarket position
PROTECT THE DISTINCTIVENESS OF YOUR COMPANY
The Trademark
It is a distinctive sign that serves to distinguish goods and/or services that a natural or legal person produces or puts on the market.
Trademarks may be signs that can be represented digitally (words, including personal names, drawings, letters, figures, sounds, shape of the product or packaging, combinations, chromatic tones, holograms…) provided that they are capable of distinguishing the goods or services of one enterprise from those of other enterprises.
IN ADDITION TO THE EXCLUSIVE RIGHT
11 reasons to register a trademark
- It grants the owner an exclusive right to use it
- It protects the unique distinctiveness of your company or your product and/or service in a globalized world
- It allows timely defense in case of infringement and it is a deterrent for a third party to use a similar trademark
- It facilitates identification through search engines
- It allows the acquisition of new territories on an exclusive basis
- It simplifies the export of goods and services
- It protects your advertising investment
- It can be used to access financing
- It is an intangible asset that can be entered in the balance sheet
- It protects an asset which is going to increase its value over time
- It is an asset to be protected
ITALIAN TRADEMARK
DURATION
10 years renewable indefinitely.
The trademark may be contested if it is not used for a period of 5 years from registration leading to its partial or total lapse.
RIGHTS
The owners of a registered trademark have the right to use it to distinguish their own goods and/or services and to prohibit its use by others for identical or similar products and/or services operating in the same class of registration. It may be assigned or licensed.
THE STEPS FOLLOWING THE FILING OF AN APPLICATION:
- VERIFICATION: The office checks whether the formal and legislative requirements are met. In Italy the UIBM does not verify any conflict with earlier trademarks already filed and/or registered. If the Office finds that there are imperfections a dispute starts to which it is possible to reply. An Appeal is possible against any decision of the Office.
- PUBLICATION: If the verification raises no issues or if these are overcome the trademark is published in the Trademark Gazette. From this time, holders of earlier rights have a period of 3 months to file an opposition.
- POSSIBLE OPPOSITIONS AND FINAL GRANT: If there are oppositions, you can defend your trademark by trying to reach an agreement with the opponent possibly limiting the goods/services claimed or let the Office decide on the basis of facts and arguments filed. An opposition stops the process of registering a trademark: at its conclusion the opposed trademark may be granted as filed, granted in part in relation to classes and subclasses, or rejected in full. If there are no oppositions, the trademark follows the normal registration process and is granted within 12 months of filing.
- APPEAL: An appeal may be filed against the decisions of the UIBM concerning the registrability of a trademark or against opposition proceedings within 60 days from the date on which the interested party received the notice or became aware of the contesting act
Before the final grant it is not possible to use the symbol ® but only the TM.
Protection starts from the filing date.
Ufficio Italiano Brevetti e Marchi
EUROPEAN UNION TRADEMARK
It allows you to obtain a trademark valid throughout the territory of the European Union with a single application.
Possibility for opposition
Within three months of publication, holders of earlier confusable trademarks may file an opposition by providing proof of earlier use of the trademark on which the opposition is based.
Duration
The duration is 10 years from the filing date. Renewal is possible indefinitely. The trademark can be contested, for example during litigation, if it is not used for a period of 5 years from registration in potentially at least one member state of the European Union (proof of use of the trademark is governed by complex legislation which cannot be summarized in one paragraph).
Rights
The trademark gives the owner the exclusive right to use that name throughout the territory of the European Union.
Office
EUIPO (European Union Intellectual Property Office) based in Alicante, Spain.
THE STEPS FOLLOWING THE FILING OF AN APPLICATION:
- Filing of the application and, if all the required information is present, obtaining a filing date, coinciding with the priority date.
- Verification related to the Classification of goods and services of the application as well as its formal requirements (such as languages, various data and any priority claims).
- Examination of admissibility on the basis of absolute grounds for refusal of registration, particularly in relation to the trademark distinctiveness.
- Publication of the application from which the 3-month opposition period begins in which third parties may file objections to the granting of your trademark based on earlier rights or absolute grounds for refusal. If there are oppositions, you can defend your trademark by trying to reach an agreement with the opponent possibly limiting the goods/services claimed or let the Office decide on the basis of facts and arguments filed. An opposition stops the process of registering a trademark: at its conclusion, the opposed trademark may be granted as filed, granted in part in relation to classes and subclasses, or rejected in its entirety
- Publication of trademark registration in the absence of opposition proceedings.
An appeal may be filed against the measures of the EUIPO relating to the registrability of a trademark or to opposition or cancellation proceedings within 60 days from the date on which the interested party received notice or became aware of the contesting act
INTERNATIONAL TRADEMARK
The international registration procedure can be initiated only after filing a national trademark in one of the member states of the Madrid Agreement or a European Union trademark. It is possible, with a single application, to designate states belonging to the Madrid Agreement and/or the Madrid Protocol.
Possibility of opposition
It depends on the laws in force in the designated states.
Duration
The duration is 10 years from the filing date. Renewal is possible indefinitely. For the first 5 years, the international trademark is linked to the life of the national or European Union trademark on which it is based, and if this base trademark lapses, the corresponding international trademark automatically lapses as well.
Rights
The trademark gives the owner the exclusive right to use that name in all designated countries.
WIPO (World Intellectual Property Organization)
DURATION
10 years renewable indefinitely.
The trademark may be contested if it is not used for a period of 5 years from the registration resulting in partial or total lapse.
RIGHTS
The owners of the registered trademark have the right to use it to distinguish their own goods and/or services and to prohibit its use by others for identical or related products and/or services operating in the same class of registration. It may be assigned or licensed
TRADEMARK FAQ
Learn more about trademarks
THE REGISTRATION TAKES EFFECT FROM THE FILING DATE
With reference to Italian national trademarks and European Union trademarks, the rights deriving from the registration of a trademark are valid from the date of filing of the application for registration with the competent office (UIBM or EUIPO) and become effective from the date of registration.
Registration gives the owner the exclusive right to use the trademark in relation to the goods or services for which it is registered, and to prohibit others from using identical or similar trademarks for similar or related goods or services, if such use is likely to cause confusion among the public.
APPLICATION NOW, THE NECESSARY ANALYSIS AFTERWARDS
Regardless of when registration is obtained, it is important to note that trademark protection begins from the date of filing the application and it becomes effective with registration.
The timeframe for obtaining a trademark registration depends on various factors, which makes it impossible to predict with certainty how long it will take. However, as an indication, it can be said that registering a European Union trademark can take 4 to 5 months through the Fast Track regime and in the absence of impediments.
As for registering an Italian trademark, the timeframe is generally longer, but less than one year.
For international trademarks, it is not possible to make predictions about registration timeframes because they vary widely depending on the designated offices.