Trademark: Which to Register and Where
We offer counsel at every step of the trademark’s development process. Ideally, a trademark is selected before market launch. Once the choice of word(s) or image that will distinguish your company is made, we are at your disposal to help you in the first phase, which consists of verifying the basic legitimacy of the trademark and the simultaneous selection of places where it needs protection.
The geographic effectiveness of the trademark is limited to the State or States where you intend to register it.
Usually, a trademark does not protect all of a company’s products and services – only those indicated when the trademark is filed and subsequently registered by the competent authorities.
There is an international classification of products and service marks called the Nice Classification (NCL) that can be used when the application for registration is made.
Based on your specific market requirements, our cunsultancy can help you determine WHICH trademark to register WHERE.
This Examination includes whether or not the trademark is new: The trademark must not be identical or similar to a previous mark for identical or related products or services, if the identity or similarity of the marks, products or services could confuse the public and result in the association of the two marks. The Examination process is conducted through the Intellectual Property Office of the relevant States and extends to the other distinguishing signs, that under certain conditions, could create problems for your trademark.
When this first phase is finished, we can tell you whether or not the mark that you have chosen stands a good chance of being filed and used without running the risk of being disputed, or, if, on the other hand, it would be better to change tack and choose another mark.
Our objective is to simplify the process of registering your trademark as much as possible, reducing to a minimum the risk of dispute, whether by the Authorities that have examined your trademark or by third party owners of prior trademarks who claim damages as a result of your application for registration. Risk is minimised by checking your trademark against the requirements of the law, as well as by research into the Trademark Registries of the relevant States.
The second step is to prepare and file documentation for your application to the competent Authorities. We are able to operate globally thanks to wide network of local solicitors and can satisfy any requirement to obtain trademark protection anywhere in the world.
Once your trademark application is filed, we can provide defensive as well as offensive assistance.
Your trademark application could be contested by government Authorities responsible for its examination. They could issue an office action, with a deadline (which varies, depending on the State) for reply. In the event, we can help you determine and evaluate the reasons for such notification, provide an opinion on the likelihood of being able to overcome the objections and help, as well, with the formulation of the defense of your trademark application.
Another possibility is that a third party (individual, company or other entity) contests your trademark, opposing its registration as a result of your application. In this case, as well, we will, first, support efforts to determine the reasons for opposition, providing our opinion on the chances of a successful opposition, then guarantee our help during the process of opposition, for negotiations as well as the filing of documents, memoranda and evidence to support your trademark application.
We offer a service that allows you to know right away when applications for trademarks identical or similar to yours are filed for identical or similar products and services. Monitoring is carried out according to your specific requirements for protection and can be limited to Italy, to Europe or carried out all over the world.
Activation of this service means that you can be informed in good time when a potentially dangerous trademark is filed, so that you can oppose its registration. On average, opposition is less costly than a Court proceeding, but opposition must be filed within clearly determined, and usually short, deadlines (often two or three months from the date of publication of the trademark, but deadlines can vary from State to State).
This service is useful whether your business is limited to Italy or extends beyond national borders. The service has allowed us to come to know, among other things, of the filing of marks identical to those of our clients through non-authorised agents and distributors, which has made it possible to block this kind of exploitation before it led to more serious consequences in terms of sales and image.
- Tel. / fax: 06 58233422