The Verification of Trademark’s Requirements
In order to identify the strengths and weaknesses of a future trademark, Eva Trojani law firm will carry out the verification of the trademark, through the examination of its requirements, even before proceeding with trademark registration.
In this post we talk about:
The trademark must be new, lawful, non-deceptive and having distinctive character.
The presence of novelty in a trademark
The verification of trademark’s requirements includes the requirement of novelty, carried out through a search in the Trademark Registries of the relevant States and extended to those distinctive signs that, whether some conditions are met, can create obstacles to your trademark.
The requirement of novelty says that:
A trademark must not be identical to or similar with an earlier trademark for identical or similar products, if due to the identity or similarity of the goods or services covered by the trademarks there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trademark.
Trademark search (identical and similar trademarks)
Trademark search is very important for the success of your trademark. It is important to know what we have to search, how and where.
If you are interested to register an Italian trademark, then the search must be carried out among all the trademarks with legal effect in Italy; therefore, not only Italian trademarks, but also European Union trademarks and International trademarks designating Italy.
Trademark search should not be limited to excluding the existence of trademarks identical to yours, but must also be extended to trademarks similar with yours, namely for example trademarks consisting of a word which differs from yours only for one or two letters; trademarks consisting of an image treating the same theme as your brand (for example, an eagle in flight) but differently represented; trademarks having a conceptual similarity.
In the light of many elements to be taken into consideration, it is certainly advisable that the search is carried out by specialized personnel, who will be able to evaluate the results in light of a substantial professional experience.
Only at the end of the verification phase Eva Troiani’s law firm will tell you if the trademark that you have chosen has good chances of being filed and used without risks of disputes or if, vice versa, it is opportune to turn your attention elsewhere and to choose another brand.
The goal will be to facilitate as much as possible the path of your brand towards registration, minimizing the risks of receiving official actions from the examiners during the examination of your trademark application and oppositions from third parties, owners of earlier rights, which would consider themselves damaged from your trademark application.