Effective strategy to manage your trademarks and IP portfolio across Italy, Europe and internationally, tailored to your characteristics and future business goals
Support throughout the entire trademark filing and registration process: from preliminary assessments of novelty and registrability to supervision during the registration process, monitoring deadlines and managing extensions and/or renewals
Web and market monitoring and targeted legal action to prevent the registration of identical or similar trademarks and to defend your trademark against misuse that may damage your business
of trademarks - existing or in the process of creation - according to the requirements of novelty, truth, lawfulness and distinctiveness
in which to register according to business strategy
carried out for both identity and similarity, analysing possible conflicts
of the application for registration
of the trademark
in public records, at the customs level, on the web
through online brand protection and legal assistance
according to the specific deadlines of individual country registries
according to the specific timelines of individual registries
Trademark registration has several functions, including:
⦁ Exclusivity, securing the right of exclusive use
⦁ Creating a distinct identity, allowing others to identify you
⦁ Quality assurance of your products, because they are traceable back to you
⦁ Attracting attention, often even outside the sector of origin
Designation protection strategy External IP office
Strategic asset portfolio management Support for marketing and legal departments
Synergy for the defence and protection of trademarks and designs | Support for IP due diligence
Synergy in the choice of naming, trademarks, designs and domains
IP compliance management in accordance with Italian and EU regulations
Protection strategy support External IP office
Planning the strategy for the establishment and defence of exclusive rights
The requirements for trademark registrability are: novelty, distinctiveness, lawfulness and non-deceptiveness. In general terms, it must therefore be:
The ® symbol communicates that the trademark is registered. It can therefore be affixed without penalty once the registration certificate has been obtained.
A trademark is registered with respect to certain goods and/or services. Goods and services are divided into product classes using the Nice Classification. The Nice Classification has 45 classes, of which the first 34 consist of all existing types of products, and the next 10 (35 to 45) group all types of services that can be rendered.
An application for renewal of a trademark registration may be filed within 12 months before its expiry in Italy or within 6 months after its expiry in the European Union.
The application for renewal may also be submitted after the expiry date by means of a late application, but in this case a surcharge must be paid, and in any case within six months of the original expiry date. Beyond such date the trademark registration is no longer renewable. If the trademark owner is interested in maintaining its protection, they must then file a new application.
Italian law provides that a trademark may be registered by anyone who uses it or proposes to use it in the manufacture or trade of goods or in the provision of services by their company, or by companies over which they have control or which use it with their consent.
A person meeting these requirements is entitled to file the application and may do so directly with the Chamber of Commerce, or through the support of a qualified consultant licensed in the Register of Industrial Property Consultants.
Registration is permitted for owners or exclusive licensees of trademarks that have been registered in Italy for at least 50 years or for which continuous use can be demonstrated for at least 50 years. Moreover, in order to be registered, the trademarks must be used for the sale of products or services made by a national manufacturer of excellence, historically linked to the national territory.
Yes, both Italian and EU law provide for the possibility of registering marks consisting of the shape of the product or its packaging as a trademark, provided that it distinguishes the products/services of one company from those of another, and that it can be represented in the register.
However, marks consisting solely and exclusively of the shape or other characteristic cannot be registered as trademarks if:
A collective mark is a distinctive mark whose purpose is to inform the consumers about the quality standards of certain goods and services and that the manufacturer or service provider belongs to a specific association that assesses the quality standards and has granted them the right to use such a mark. The collective mark is filed together with rules for its use that forms an integral part thereof. The rules for use must specify the persons authorised to use the mark and the conditions of membership in the association. It may also include the mark’s conditions of use.
The EU Trademark Regulation defines collective marks as marks “capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings”.