Registrare Marchio

  • Who we are
    • Eva Troiani law firm: trademark registration and legal protection
    • The Project Registrare-Marchio.com
  • Trademark consultancy
    • The Verification of Trademark’s Requirements
    • Trademark Search: identity and similarity
    • Where to register a trademark
    • Filing a Trademark Application
    • Graphic Creation of a Trademark
    • Trademark protection: the surveillance service
  • Trademark legal assistance
    • Trademark defense from objections of the Trademark Office
    • Trademark defense from disputes
    • Trademark Opposition Proceedings
    • Trademark Assignment and Licence Agreement
  • Contact
  • FAQ
  • Certification
    • EUIPO Webinar 2023
    • SEE Webinar 2023
  • LANGUAGES
    • English English
    • Italiano Italiano
  • The trademark
    • What a Trademark is
    • How to Conceive a Brand
    • Types of Trademarks
    • Denominative and Figurative Trademark
    • Collective Trademark
    • Color Trademark
    • Position Mark
    • Slogan Trademark
    • New marks
    • Unregistered trademark
    • Deceptive Trademark
    • Trademark with Reputation
    • Family of trademarks: what they are
    • Invalid Trademark and Revocation
    • Trademark symbols which can be used in Italy: ™ and ®
    • Value of a brand
    • Trademark assignment
    • Trademark Licence agreements
    • Right of Priority of a Trademark
    • Validation of a trademark
    • Limitations of the Right on the Trademark
    • How to Avoid Complaints to a Trademark
    • Read more
  • Registering a trademark
    • Why to Register a Trademark
    • Who is Entitled to Register a Trademark
    • Filing and Registering a Trademark
    • Nice Classification – 11 edition 2022
    • Duration of a trademark
    • Registering a logo or Registering a brand?
    • How much it costs to register a trademark
    • Graphic changes to a registered trademark
    • Trademark Registration in Italy
    • Registering the European Union trademark
    • Registering an international trademark
    • REGISTERING A TRADEMARK IN EUROPE
    • REGISTERING A TRADEMARK IN THE MIDDLE EAST
    • REGISTERING A TRADEMARK IN ASIA
    • REGISTERING A TRADEMARK IN NORTH AMERICA
    • REGISTERING A TRADEMARK IN LATIN AMERICA
    • REGISTERING A TRADEMARK IN AFRICA
    • REGISTERING A TRADEMARK IN OCEANIA
    • read more
  • Mistakes not to be made
    • 10 errors not to do with trademark
    • Lack of distinctive character of a mark
    • Vulgarization of Trademark
    • Signs become customary cannot be registered as trademarks
  • Further considerations
    • CASE LAW AND TRADEMARK
    • DISTINCTIVE CHARACTER OF A TRADEMARK
    • CONTRACTS RELATED TO TRADEMARKS
    • TRADEMARKS AND BAD FAITH
    • COUNTERFEITS AND MISLEADING INDICATIONS
    • UNFAIR COMPETITION
    • GEOGRAPHICAL INDICATIONS
    • EUROPEAN UNION TRADEMARK
    • COPYRIGHT
  • News
    • Read posts
  • Guest corner

Home REGISTERING A TRADEMARK Who is Entitled to Register a Trademark

Who is Entitled to Register a Trademark

by Redazione / Friday, 30 March 2018 / Published in REGISTERING A TRADEMARK

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.

who is entitled to register a trademark

In this post we talk about:

  • Who is entitled to register a trademark in Italy
  • Who in entitled to register a trademark EU
  • Who in entitled to register a trademark in the world
  • Co-ownership of the trademark

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.

Do you want to register a trademark? Contact us!

Did you find this article interesting? Share it!

They may also be interested in these items

Graphic changes to a registered trademark: can they be made?

Why to Register a Trademark

Trademark assignment: what it is and how to do it

Eva Troiani

Eva Troiani (Attorney At Law)

Eva Troiani has been working for over 15 years dealing with all aspects of the trademark: from trademark application to trademark registration worldwide, providing assistance in the event of disputes; she proposes an extensive legal advice to companies and professionals. She is the author of all the articles in this website “registrar-marchio.com”, a project created with the aim of providing useful and updated information on the trademark’s world to all readers. You can follow the lawyer Eva Troiani also on her Linkedin profile.


 

Eva Troiani

Do you need assistance, advice or information? If you have an idea, do not let it steal!

Contact Eva Troiani’s law firm

For registration and protection of trademarks

The texts in this database are only for informational and scientific purposes and they are not to be considered official; we therefore decline any responsibility for possible errors or inaccuracies. All mentioned trademarks belong to their legitimate owners; trademarks, product names, trade names and the images of the products are the property of their respective owners. They are used in this database only for informational purposes, without any purpose of violating existing rights of others.
The information you obtained at this site is not, nor is intended to be, legal advice. You should consult Ms. Eva Troiani and/or a trademark attorney and/or an attorney at law handling with intellectual property for individual advice regarding any legal questions that you may have.

Find out why Mario decided to register his trademark

Register now your trademark!
Guest Corner

Last articles

  • Registrare un marchio in India (Trademark)

    Trademark Filings in India – Your Roadmap to Protection and Success!

    Colleague Ankita Malik explains in detail the t...
  • Tutela della voce nella giurisprudenza americana ai tempi dell'AI / voice protection in American jurisprudence

    Hey, that’s my voice! Can I sue them?

    My colleague Teresa Segalman explains what Amer...
  • Trade marks in Vietnam: “I want to overcome the refusal”!

    My colleague Nguyen Ngoc Thanh explains in deta...
  • Provisional Refusal in Japan-Rifiiuto provvisorio in Giappone

    Frequent Provisional Refusal in Japan

    A frequent ground for refusal refers to the mai...
  • Lack of distinctive character of a mark

    Lack of distinctive character of a mark

    : It is defined distinctive the sign able to id...

Category

  • THE TRADEMARK
  • REGISTERING A TRADEMARK
    • REGISTERING A TRADEMARK IN EUROPE
    • REGISTERING A TRADEMARK IN THE MIDDLE EAST
    • REGISTERING A TRADEMARK IN ASIA
    • REGISTERING A TRADEMARK IN NORTH AMERICA
    • REGISTERING A TRADEMARK IN LATIN AMERICA
    • REGISTERING A TRADEMARK IN OCEANIA
    • REGISTERING A TRADEMARK IN AFRICA
  • MISTAKES NOT TO BE MADE WITH TRADEMARKS
  • INSIGHTS INTO BRAND
    • CASE LAW AND TRADEMARK
    • DISTINCTIVE CHARACTER OF A TRADEMARK
    • COPYRIGHT
    • CONTRACTS RELATED TO TRADEMARKS
    • TRADEMARKS AND BAD FAITH
    • COUNTERFEITS AND MISLEADING INDICATIONS
    • UNFAIR COMPETITION
    • GEOGRAPHICAL INDICATIONS
    • EUROPEAN UNION TRADEMARK

Subscribe to the newsletter

come contattare l’Avv. Eva Troiani

+393382938021

Utility

  • Eva Troiani law firm: trademark registration and legal protection
  • The Project Registrare-Marchio.com
  • Where to register a trademark
  • The Verification of Trademark’s Requirements
  • Trademark Search: identity and similarity
  • Filing a Trademark Application
  • Graphic Creation of a Trademark
  • Trademark protection: the surveillance service for the protection of your brand
  • Trademark Opposition Proceedings
  • Trademark Assignment and Licence Agreement

Contact

Eva Troiani (Attorney At Law)

P. Iva IT07106461002
+39.338.29.38.021
info@marchiebrevettiroma.it
  • Who we are
    • Eva Troiani law firm: trademark registration and legal protection
    • The Project Registrare-Marchio.com
  • Trademark consultancy
    • The Verification of Trademark’s Requirements
    • Trademark Search: identity and similarity
    • Where to register a trademark
    • Filing a Trademark Application
    • Graphic Creation of a Trademark
    • Trademark protection: the surveillance service
  • Trademark legal assistance
    • Trademark defense from objections of the Trademark Office
    • Trademark defense from disputes
    • Trademark Opposition Proceedings
    • Trademark Assignment and Licence Agreement
  • Contact
  • FAQ
  • Certification
    • EUIPO Webinar 2023
    • SEE Webinar 2023
  • GET SOCIAL
Registrare Marchio

registrare-marchio.com | Avv. Eva Troiani © 2015 - All rights reserved | Cookie policy | Privacy policy
The contents of this site provide readers with general information and are not legal advice.
Powered by
Ip Coster

TOP

Questo sito fa uso di cookie tecnici per permettere una corretta navigazione agli utenti e cookie di terze parti (come Google Analytics, Maps, ReCapcha, etc..) per migliorarne la fruizione. Se vuoi saperne di più consulta la nostra Cookie Policy.

Questo sito utilizza i cookie per fornire la migliore esperienza di navigazione possibile. Continuando a utilizzare questo sito senza modificare le impostazioni dei cookie o cliccando su "Accetta" permetti il loro utilizzo.

Chiudi