What a Trademark is

It is important to exactly understand what is a trademark before addressing the issues such as trademark registration and trademark protection.

The word trademark means any sign (which can be made up of words – including the name of people – drawings, letters, figures, but also sounds, shapes of a product or product packaging, colour or combination of colours) that is unique and distinctive compared to the other brands in competition with yours for the same or similar products or services.

Legal definition of trademark

Article 7 of the Italian Industrial Property Code provides that:

“A trademark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the sounds, the shape of the product or its package, combination or shades of colors, provided that are capable of distinguishing the goods or services of one undertaking from those of other undertakings”.

Similarly, article 4, a) of the European Trademark Regulation n. 2017/1001 provides that:

“An EU trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings”.

These are lists by way of example, which do not exclude, therefore, the existence of other possibile types of trademarks on condition that they have distinctive capacity.

Characteristics of a trademark

A trademark can take many forms: it can be constituted by one or more signs, even of different species – words, designs, numbers, letters, colors or their combination thereof, and even sounds.
The most common categories are trademarks constituted by words (denominative or verbal trademark), images (figurative trademark) or by a combination of words and images (complex trademark).
In order to have more information on all the types of trademark we suggest you to read “all types of trademarks”.

Trademark requirements

In order to be legally protected, the sign you wish to register must have the following legal requirements:

Originality

The trademark must have distinctive capacity. It must be in such a way to allow the identification of the marked products among all the products of the same kind which are in the market. Trademark is a communication vehicle establishing a link between the product (or service) and the company. Public must perceive that the trademark is directly connected to its owner, who has an exclusive right on it and the trademark cannot be used by third parties except, actually, with the consent of the owner (art.14,1).

Therefore, they cannot be used as trademarks:

1. Generic names of the product or service or their generic shape, namely merely descriptive of its characteristics or of common use (for example, “scotch drink” for a whisky-based beverage);
2. Those consisting solely of descriptive indications, such as species, quality, quantity, destination, value, geographical origin or time of manufacture of the product and the provision of the service or other characteristics of the product and service (for example, “glossy” for polishing products);
3. The signs that have become common in current language such as the words “super”, “extra”, “luxury”.

The requirement of distinctiveness is respected when you use words or figures with no relation with the distinguished product.
Finally, it is possible to use as a trademark generic names or commonly used words amended or combined in a fanciful wy (for example, “amplifon” for hearing tools).

Truth

The principle of truth forbids the use in the mark of “signs suitable for deceiving the public, particularly on the geographical origin, the nature or the quality of the products or services” (Article 14, paragraph 1, letter b, Italian Industrial Property Code)

Novelty

They cannot be trademarks the signs which

“…are identical with or similar to a trademark already registered by others in the State…for identical or similar products or services, if due to the identity or similarity between the signs and the identity or affinity between the goods or services there may be a likelihood of confusion for the public, which may also consist of a risk of association between the two signs”

(Article 12, lett. d) of the Italian Industrial Property Code)

Lawfulness

They cannot be registered as trademarks:

1. The signs contrary to law, public policy or the accepted principles of morality; for example, trademarks evoking the rebirth of the Nazi party or denigrating a race or a religion;
2. The signs liable to mislead the public, particularly on the geographical origin, nature and quality of products or services;
3. Signs whose use would be a violation of a copyright, industrial property or other exclusive right of third parties. For example, the use of the title of a book, of a song or a film as a trademark (article 14, 1).

The lack of the aforementioned requirements may lead to the invalidation of the trademark (art.25, 1 of the Italian Industrial Property Code), which may also concern only part of the products or services for which the trademark has been registered.
Therefore, be sure to have complied with these requirements.

If you entrust a professional in IP field you will be sure to correctly file the application trademark without loss of time, risks and problems which may arise following the trademark application filing.

Eva Troiani law firm can offer the necessary assistance. Please contact us!