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Italiano Among intangible assets of a company, the registered trademark has an important value.
Let’s find out what it is and its characteristics.
In this post we talk about:
What is a registered trademark
A registered trademark is any graphical sign or word or sound, color, shape etc. which has obtained the registration certificate from the competent authorities after the filing of a trademark application and the positive outcome of the registration proceeding. These authorities can be UIBM (Italian Patent and Trademark Office) for Italian registered trademarks, EUIPO for European Union registered trademarks, WIPO for international trademark registrations valid in foreign Countries parties to the Madrid Agreement and/or the and / or Madrid Protocol and the Trademark Offices of foreign countries for trademarks filed in foreign States.
Therefore, “Italian registered trademark” means a registered sign (word / sound / color / shape / etc.), valid in Italian territory (including Vatican City and Republic of San Marino) for 10 years, potentially indefinitely renewable.
The protection of a registered trademark
What exactly does “protection of a registered trademark” mean?
Well, first of all it means that from the moment of the filing of your trademark application you can take action to prevent the registration of signs which are identical with or similar to your trademark for goods and/or services which are identical to or similar with yours (obviously in the territory in which you are protected) and this can be done by administrative proceedings such as the oppositions to prevent the registration of a trademark.
How to find out if an identical or similar trademark has been registered or if anyone is trying to register in bad faith? A possibility is the trademark surveillance, a service given by IP professionals who check the national and international trademark registries in the territory and for the classes of your interest, in order to prompty identify the filing of trademark applications of identical or similar trademarks.
The unregistered trademark
Is it mandatory to register a trademark? Not necessarily, for example in Italy it is possible to use a trademark without registering the same. It is called unregistered trademark, which has a certain level of protection, not comparable, however, to the level of protection of a registered trademark.
Deciding whether to register a trademark or just to use it will depend on the economic/strategic/financial assessments related to your business.
Registering a trademark when the sign has already been used for years (it could happen, for example, if you decide to sell or to license it) could lead you, for example, to discover the existence of other trademarks (already registered) which are identical with or similar to yours. In these cases it will be goods to receive an help by an IP professional, in order to assess your position.
How to recognize a registered trademark
Although it is not mandatory in Italy, it is customary to affix a symbol consisting of a letter R inscribed in a circle near the trademark which has obtained the registration.
It is forbidden and punishable by the law to place the registered trademark symbol on not registered trademarks.
Expired trademark
At the beginning of this article we said that a trademark registered in Italy has a duration of ten years from the filing date, after which you can proceed with its renewal. You will not be obliged to do so: if you deem that the trademark no longer represents a useful value for your business, you can also decide not to renew it.
Be careful to remember it! Not always the trademark office will inform you of the expiration of the trademark, it depends on the Country in which the trademark is registered.
Furthermore, even if you receive the notice of expiration, you might not give it the right weight and trash the information. It happens that trademark owners who have unknowingly ignored the deadline for renewal have seen their trademarks expired. Also in this case, we recommend that you ask to a professional expert in trademarks, so that it can take care of the deadlines.
Revoked trademark
If you think that once the trademark is registered it is forever safe, this is not the case. Better to say, it may not be! In fact, it may happen that after some years a trademark loses its distinctive capacity which, we know, is ont of the legitimacy requirements of the trademark.
It may occur if the trademark is no longer perceived as an sign of the origin of a product, or as the distinctive sign of the manufacturer of a specific product (or the provider of a service), but as the generic name of a whole category of products (or services).
This happened, for example, to the trademarks “Kleenex” (the word has become synonymous with box of paper tissues) or to “Cellophane” (it has become synonymous with transparent film) and many others.
We define this matter as vulgarization of trademark (we ask you to make reference to the specific article to find out which actions it is useful to take in order to prevent a trademark from the vulgarization): the trademark, being no longer able to identify a product (or a service), loses its nature of trademark. A company may suffer a very serious damage, which has to be prevented in every way.
The trademark can be revoked also because not used, a very important element which is often not known. The law usually allows the owner a period of time to start using its trademark, but after a few years from registration (the exact period varies according to the States, generally speaking we can say that it is usually between three and five years from registration), it is required that the trademark be effectively and not symbolically used.
Types of trademarks
Do you know that you can register many types of trademarks? A trademark is not only a word or a graphic icon, but it is may be, for instance, a color (or a combination of colors), a three-dimensional shape, a specific position of an element, a graphic pattern, a sound and much more. If you want to learn more about the types of trademarks, we invite you to read our article Types of trademarks: definitions and characteristics, where you will find a list with further information.
The costs of a registered trademark
In addition to the costs during the filing phase, which will vary depending on the number of classes in which you decide to register the trademark and the territories of your interest, it will be necessary to estimate a cost for the trademark search. After registration, as already mentioned, it will be advisable to activate the trademark surveillance system so that you can be sure of better defend your trademark.
We cannot calculate such costs because we are not aware of your effective exigencies, but we kindly ask you to take into consideration two points:
- Each cost related to your trademark should be considered an investment: by protecting your trademark you will give value to your company and your products and you will obtain an uniqueness on the market, which is very important;
- The majority of costs are related to the initial phase of protection of the trademark, namely trademark search and trademark filing, but once the registration is obtained there will be no fees to pay for many years, as long as you do not have to pay the renewal fees, provided that you wish to keep your trademark alive.
If you want to learn more about the cost of the trademark, we invite you to read our in-depth article: what costs are necessary to register a trademark and support its protection.
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