Protecting brands through trademarks

A trademark is a sign capable of distinguishing the goods or services of an enterprise from those of other enterprises, as well as being represented in the register in such a way as to enable the competent authorities and the public to determine, with clarity and precision, the scope of protection conferred to the sign.

All signs, such as words, including the names of persons, drawings, letters, figures, sounds, the shape of the product or its packaging, colour combinations or shades, with the exception of words, figures or signs detrimental to the image or reputation of Italy, signs containing symbols, emblems and coats of arms, which are of national or international public interest, or consisting exclusively of the shape, or other feature, imposed by the nature of the product itself, necessary to obtain a technical result, or to give substantial value to the product, may be registered as a trademark.

The trademark gives its owner the exclusive right to use it in the production, promotion, and marketing of goods or in the provision of services of its enterprise; it also gives the owner the right to prohibit third parties, except with its own consent, from using an identical or similar sign for goods or services identical or similar to those for which the trademark is registered, where, because of the identity or similarity between the signs and the identity or similarity between the goods or services, a likelihood of confusion between the signs may arise for the public, which may also lead to a likelihood of association, to the extent that the public would be likely to confuse the origin of the goods or services.

A registered trademark is an exclusive, potentially perpetual right that is obtained by registration and is maintained, subject to the filing of a renewal application every 10 years, provided that the trademark is effectively used in the market, in a form that does not materially differ from the trademark as registered, and that the use is lawful and not deceptive as concerns the characteristics of the goods or services.

We assist our clients in the verification and preliminary assessment of the registrability requirements of the chosen sign as a trademark, such as novelty, distinctive character, and lawfulness, through prior rights searches and preliminary registrability opinions carried out at the client’s request. We develop with the client the prior rights search strategy, which allows to better define the scope of protection of the proposed trademark rights and prevent potential risks of infringement of exclusive rights of third parties.

• As regards the requirement of distinctive character, signs are eligible to protection as trademarks if, on the application date, they are deemed to be distinctive in relation to specific goods and services. Conversely, they are excluded from protection as trademarks if they are devoid of distinctive character, to the extent that consumers would not identify the sign as a “source indicator” of an enterprise in relation to goods and services; if they are descriptive to the extent that they consist exclusively of generic names of goods or services or descriptive indications of the kind, quality, quantity, destination, value, geographical origin, time of manufacture of the goods or provision of the service, or other characteristics of the goods or services; also, if they consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; with the exception of those non-distinctive, descriptive or commonplace signs, which prior to the application for registration, as a result of their use, have acquired distinctive character (i.e., secondary meaning).
• As regards the requirement of novelty, signs are eligible to protection as trademarks if, on the application date, they are deemed as new with respect to prior rights, in relation to specific goods and services. Conversely, they are devoid of novelty if, on the date of filing the application, they are identical or similar to a sign already filed or registered, or otherwise generally known as a trademark or distinctive sign, such as a business name, trade name or domain name, used in economic activity to distinguish goods or services manufactured, put on the market or rendered by others, for identical or similar goods or services, where, because of the identity or similarity between the signs and the identity or similarity of the goods or services, a likelihood of confusionbetween the signs on the part of the public may arise, which may also lead to a likelihood of association, to the extent that the public would be likely to confuse the origin of the goods or services with another enterprise.
• As regards the requirement of lawfulness, registrable signs are those that are not contrary to law, public policy, or accepted principles of morality; that are not likely to mislead the public, in particular as to the geographical origin, nature or quality of the goods or services, or the type of trademark; whose use would not constitute an infringement of another’s copyright, industrial property right, or other exclusive right of a third party; that do not contain or reproduce, in their essential elements, designations of origin, geographical indications, traditional terms for wines, traditional specialties, plant varieties, protected by Italian or European Union legislation, or by international agreements to which the European Union or Italy is a party.

In consultation with our clients, we clearly and precisely define the scope of protection (i.e. description of goods and services) as part of the trademark application, taking into account the criteria set forth in the International Classification of Goods and Services (Nice Classification) and the guidelines adopted by the trademark offices of various countries.

We define the geographical scope of protection in line with the client’s business plan, taking into consideration the countries of current and potential production, promotion, and marketing of the goods and services to be distinguished by the trademark.

We assist and represent our clients in the various stages of the registration procedure of their trademarks, in Italy and abroad, such as filing and prosecution of the application, the latter consisting of the examination and publication of the application, up to registration. We reply to any objections or remarks by the competent Trademark Office; we verify the correspondence between the trademark as filed, as subsequently published and, finally, as registered, as well as the correctness of the description of the goods and services, which define the effective
scope of protection of the trademark.

We manage the registration procedure of Italian national trademarks, European Union trademarks, International, and foreign trademarks, in accordance with the laws, regulations and international treaties, also dealing with their defence in the context of any active oppositions to be brought against third party trademarks, as well as passive oppositions brought by third parties, or in the context of active and passive invalidation proceedings and non-use cancellation proceedings, brought after registration, both in Italy and abroad.

We provide trademark watching services covering identical or similar trademark applications/registrations published on official registries, or covering trademarks publicized on the web, in the marketplace, among competitors, at customs authorities, to protect our clients’ trademarks.

We support our clients in operations of due diligence, valuation, and economic enhancement of their trademarks, in consultation with outside attorneys and other professionals with proven experience and expertise. We take care of the drafting of all types of contracts, related to IP rights, in consultation with trusted outside attorneys.

We assist our clients in the defence of their trademarks, in active and passive oppositions or actions, in the administrative, civil, criminal out-of-court, and judicial defence of our clients’ trademark rights, also in collaboration with trusted outside attorneys.