The validity of a trademark is territorially limited; therefore, in order to answer the question of who is entitled to register a trademark, it is necessary to make reference to the national or supranational regulations of reference. Besides, we remind you that it is possible the co-ownership, namely the possibility that a trademark is in the name of more persons. Let’s see more specifically.
In this post we talk about:
Who is entitled to register a trademark in Italy
In Italy, article 19, 1) of the Industrial Property Code provides that:
“Registration of trademark can be obtained by those using it or proposing to use it, in manufacturing or trade of products or in the performance of services of own company or controlled companies or that use it with its consent”.
Therefore, a very wide category of subjects can apply for the registration of a trademark in Italy: among these, with a non-exhaustive list, natural persons (even non-VAT), individual firms, companies, associations and foundations, consortia.
Third paragraph of article 19 provides that:
“The administrations of the State, regions, provinces and municipalities can obtain trademark registrations too…”
Contrary to what happened in the past, it is allowed that who registers the trademark does not wish to directly use it but intends to transfer its use to third parties.
Who in entitled to register a trademark EU
With regard to European Union trademark, article 5 of the European Union trademark Regulation 2017/1001 provides that:
“Any natural or legal person, including authorities established under public law, ma be the proprietor of an EU trademark”.
The rule is intentionally very broad, in order to allow all – members of the European Union or not – to take advantage of the protection granted by the EU trademark.
If the applicant of an EU trademark application has in the EU his/her/its domicile, principal place of business or a real and effective industrial or commercial establishment in the European Union, there is no obligation to be represented.
Otherwise, the applicant shall be represented by one of the following categories:
- A legal practitioner established in the European Union who is entitled to act as a representative before the central office of the Country where he/she is established;
- A professional representative whose name appears on a special list kept by the EUIPO;
- An employee of natural or legal persons having their domicile or principal place of business or a real and effective industrial or commercial establishment in the European Union.
Who in entitled to register a trademark in the world
When you want to file a trademark application abroad it is always advisable to contact a trademark attorney or an Attorney at Law dealing with intellectual property, who can inform you of the requirements (as well as laws and documents) required by the State of your interest.
Eva Troiani law firm has a network of qualified colleagues who can represent you all over the world in the matter of trademark registration, defense and representation of your trademark.
Co-ownership of the trademark
A trademark application may be submitted on behalf of one or more persons, whether natural or legal persons.
The possibility of co-ownership of a trademark is stated by article 6 of the Italian Industrial Property Code, according to which (first paragraph):
“If an industrial property right is owned by several subjects, the related rights are regulated, unless otherwise provided for in agreements, by the provisions of the Civil Code regulating the joint ownership to the extent compatible”.
Also an EU trademark may belong to one or more persons. The possibility of co-ownership is explicity considered as an option by article 19, paragraph 3 of EUTM Regulation 2017/1001, which provides for that: “Two or more persons are mentioned in the Register as joint proprietor”:
The co-ownership of a trademark has not to deceive the public.
Different uses of the same mark by its co-owners might create problems; for example, more owners of a same trademark could place on the market product of different quality even if distinguished by the same brand. There is the possibility that a consumer who has purchased the best product buys at a later stage other products trusting in the warranty offered by the identity of the brand and instead find a worse product…just deceived by the trademark, which should instead guarantee the origin of the purchase.
If such deception occurs, it will be possible to apply article 14, paragraph 2 of the Italian Code of Industrial Property, which imposes the revocation of a trademark for supervened deception.
If you wish to file a trademark application in co-ownership, we suggest you to do all your best from the beginning in order to avoid problems due to different uses of your trademark.
It is advisable drawing up agreements in which each of the holder undertakes to use the mark in respect of common quality standards.
We are at your disposal for further explanations of drafting agreements.