Registering trademark is essential, because, with globalization and the wide spread of the internet, the traditional commercial and geographical coordinates are often overcome and a trademark can easily be subject to abuse and counterfeiting.
In this regard it is useful to know that, in principle and subject to verification in the country where you intent to use your brand, nothing prevents you from using your brand without activating any registration procedure.
Anyhow, it is good to know that:
- In some States simple use of the (unregistered) trademark is not recognized and does not give you any right;
- Your trademark will be commercially more attractive if it is registered (or at least filed), in all cases where you decide to make it the subject of commercial transactions, for example in the case of transfer of ownership (trademark assignment agreement) or if you grant its use to a third party (trademark license agreement);
- It is easier to contest the use and filing of a confusingly similar trademark if you are the owner of a filed/registered trademark. A trademark only used (namely a trademark that, although in use, has not been registered or filed) cannot always be the basis of a dispute and, even when it is possible, it will be necessary to demonstrate its use or notoriety, circumstances not always easy to prove;
- Finally, we remind you that pursuant to Article 12, b) last paragraph of the Italian Industrial Property Code:
“the previous use of the sign, when it does not cause notoriety of it, or if a purely local notoriety results from it, does not prejudice the novelty”.
- In other words, if you used a trademark without having registered the same and your trademark has not become a nationally well known trademark, or has become a well-known trademark but only in a local area (for example, you have used a brand for services offered by a farm holidays, but such brand is known only in the city of Siena), everyone (even without your authorization and without you being aware of it) will be able to register this mark without you are able to prevent it.
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