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Italiano FAQ: questions and answers on trademarks
Under Italian law, any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, sounds, the shape of goods or their packaging, the combination or chromatic shades, may be the object of the registration as a trademark, provided that such signs are capable of distinguishing the goods or services of a company form those of other undertakings.
For more information: What a trademark is
For more information: What a trademark is
The mark can be only a design, it is not mandatory that is composed of one or more words.
For more information: Types of Trademarks: Definition and Characteristics
For more information: Types of Trademarks: Definition and Characteristics
Yes, provided that the slogan is distinctive. This means that the slogan, whatever its promotional meaning, must have something that allows the relevant public to perceive the same as an indicator of the commercial origin of the products and/or services.
For more information: Mark consisting of advertising slogans in the EU case-law
For more information: Mark consisting of advertising slogans in the EU case-law
Yes, the registration of the mark may also be claimed by an individual not registered for VAT.
For more information: Who can register a trademark
For more information: Who can register a trademark
Yes, a trademark application can also be filed by more than one individual and/or company.
For more information: Co-ownership of the trademark
For more information: Co-ownership of the trademark
The search allows you to become aware of the existence of earlier marks which are identical to and/or similar with yours and allows, in this way, to change the mark to be filed in order to make it different from the existing ones. Ultimately, the search is important as helps you to reduce the risk to be contested by the owners of earlier marks.
For more information: Trademark search
For more information: Trademark search
This kind of search cannot be considered neither complete nor safe. There may exist brands that, despite not being used and not being visible on the market, nevertheless exist by a legal point of view and have full effect, then are in the position to challenge another trademark filed after them.
The principle is that the search should be carried out among the marks effective in the area concerned. For example, if you want to register a trademark in Italy, the search should concern all the marks effective in Italy, namely Italian trademarks, Community trademarks and International Trademarks designating Italy.
The Nice Classification is an international classification system of products and services used for the registration of trademarks and introduced by the Nice Agreement signed on 15 June 1957 in the French city. The Classification consists of a total of 45 classes, 34 of products and 11 of services.
For more information: Nice Classification
For more information: Nice Classification
It means to constantly check the Trademark Registers of interest in order to be quickly aware of the filing of trademarks identical to or similar with your trademark.
Per approfondire: Trademark protection: surveillance actions
Per approfondire: Trademark protection: surveillance actions
It is important that you are timely aware of the filing of a trademark which may be confused with yours because in many Countries (including Italy) the law provides with a short deadline to file an opposition against a trademark application.
For more information: Trademark opposition proceedings
For more information: Trademark opposition proceedings
You can consider devoid of any distinctive character the trademark which directly coincides with a word that describes the product identified by the mark (for example, “jeans” for “denim trousers”, “anti-rain” for a raincoat or “moisturizer” for a face cream) or consists of descriptive indications relating to the product.
The vulgarization is the phenomen that occurs when a word, originally in effect a trademark, becomes in the public’s perception the common name used to indicate a product. The mark must have become the common name for the goods or services among the large majority of the relevant public including those involved in the trade of the goods or services in question. A vulgarized trademark loses any connection with the enterprise and becomes the common word which identifies all the products of the same category.
Yes. First of all, it is necessary that the trademark owner does not use its trademark as generic name of the product, secondly, it is necessary that the owner defends its trademark when he sees that its mark is used in a descriptive function by others; for example, it could be useful to remind in the advertisements that the goods are protected by a registered trademark.
In Italy, the registration lasts ten years from the date of filing and the trademark is renewable indefinitely for equal periods of time.
No. Ten years is the time in the majority but not in all the States. You should always check what provides the law in each State.
The community trademark is necessarily effective in all EU Countries and, in case the mark ceases to have effect, it will be similarly not effective in all States of the European Union, because it is not able to explain its effects only in some Countries of the European Union but not in others. Thus, for example, the Community trademark cannot be declared invalid only in France and Poland but valid in the remaining States of the European Union or in any of them, because it must be valid or ineffective in all Member States of the European Union and not only in some of them.
The international trademark is not a trademark with worldwide validity; it is not a trademark whose registration automatically gives protection all over the world. When you file an international trademark, you have to ask protection in the States of your interest and the trademark will be examined separately by the Trademark Office of each Country designated in the application. At the end of the different phases of the examination, the trademark may obtain protection in all or in part of the States designated in the application.
The choice of the international registration may give many advantages: with a single application, in one language, you can apply for protection in several States; there will be one renewal and also the possibility of extending subsequently in other Countries the effectiveness of the international trademark.
No, it is possible to designate only the States that joined to the Conventions relating to the international trademark. If you are interested in a Country which is non-protectable by an international registration you can always protect the same by filing a national trademark in the Country of your interest (for example, a national Brazilian trademark in Brazil).
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