Where to register a trademark

When you decide to register a trademark, one of the first questions is:

“where to register a trademark’”

without imagining that this question has 3 different answers. Let’s see them in detail.

 

 

Where has a trademark to be registered? The choice of the classes

First of all, you have to decide which products and/or services you wish to protect with your trademark and then ask to yourself: which Nice class is suitable for my trademark?

In fact, the registration of the trademark does not protect all the products and services but only those claimed in the phase of trademark application filing and then granted by the competent Office: there exists an international classification of goods and services, named Nice Classification, which has to be taken into consideration when you file a trademark application.

If you wish to know in detail all the classes of products and services, you can go to our section Nice Classification for the registration of trademarks.

It is very important to exactly know which products (or services) will be distinguished by your trademark in order to file a complete list when you file the trademark application, taking care to of the rules concerning the words to be used, in order to avoid problems with the Examiners.

The suggestions of Eva Troiani law firm, calibrated on your specific market needs, will allow you to easily and correctly identify the classes.

 

Where have you to register a trademark? The choice of the territory

The territorial validity of the trademark will be limited to the State or the States in which you wish to file your trademark application, so you should ask to yourself: where do I want to protect my trademark?

If the trademark is registered in Italy, it will be protected in Italy and not, for example, in France. If the trademark is registered in the European Union, it will be protected in all the Countries of the European Union and not, for example, in the United States or England.

Therefore you will have to carefully decide the markets of your interest, in order to decide whether to register an Italian trademark, a European trademark registration or international trademark registration or a national registration in a foreign Country (for example, Turkish trademark in Turkey).

Deciding where to register a trademark becomes an important strategic action for your business.

Where can you register a trademark? The choice of a professional expert

You can do by yourself the filing of the trademark application to the competent office (UIBM for Italian trademark, EUIPO for EU trademark and WIPO for the international trademark registration).

You can fill online application and to pay the amount due (government fees), but you will not receive assistance on the choice to be made. Is it better to register the trademark in black and white or with colors? In one or more classes? Only in Italy or abroad? A word mark or a figurative mark?…

In addition to these legitimate questions, no one will tell you if the sign that you are going to file meets the requirements of a trademark, so you might see rejected your application, with consequent waste of time and money. We talked about this matter in this article: “how much does it cost to register a trademark”.

A trademark is a very important asset for your business: do not compromise its protection by neglecting this phase because you could be suffer the consequences for many years!

An expert in IP will be able to give you all the assistance you will need. It will give you all the options of choice and it will explain in detail the pros and cons in order to better evaluate which option to choose. In addition, it will take care of all the bureaucratic aspects, and if you decide that you want to register your trademark in a remote country of the Pacific Ocean, it will be able to do it because it has a network of colleagues all over the world! Think about it … J