The Italian Trademark
In order to register a trademark it is advisable to consult an expert capable of providing you with all the necessary information in order for you to select the best means of protection. However, in theory, it is also possible to proceed alone by applying personally to the competent offices in the Chamber of Commerce that receives all the registration applications and which is also the area office of the Italian Patents and Trademarks. To register a trademark is necessary to fill in the specific form (form C), indicating the classes of services and products covered by the trademarks. Then the fees and all applicable costs for revenue stamps and office administration must be paid. The application forms for trademarks are also available through the Internet.
The biggest difficulty consists in the analysis to carry out before proceeding with the registration, in order to avoid any conflict with previous trademarks registered by others.
[Word trademark, figurative trademark]
You can apply for the registration of words (word trademarks) or graphic (figurative trademarks) or even colours and shapes, when they show that product or service comes from a definite user. To avoid infringing other party’s trademarks, the selection of the mark requires careful consideration and also payment of related expenses.
As soon as a word is invented or a new word found to identify a service or product, it is essential to be aware that, the more original and inventive the word is, the stronger and more protected the trademark will be. For example, using trademarks made with the verb “to clean” on house cleaning products, will quite clearly make clients understand what the product is, but this hardly will prevent the competitors using the same verb which is descriptive of the product. On the contrary, for that same item, a word is used which has no direct relation to it, for instance “Flash” or “Cocomer”, this trademark will not describe the product, but it will be quite distinct and therefore difficult to imitate.
[Infringement]
Once the right name has been found, it is a good rule to start a research amongst identical, similar and resembling trademarks in Italy, to ensure that no other registered trademark could create obstacles. This research must be carried out considering the classes of products and services covered by the trademark and analysing the situations of possible conflict. If a similar prior trademark results from this research, it will be best to select another name and start again; on the other hand, if everything is acceptable, you can proceed analysing the graphic and the registration.
The trademark can be registered only as a word, only as a graphic, or combination of word and graphic, depending on the type. An innovative word which indicates in a strong and decisive way a product or service deserves to be registered as is, regardless of its graphic, so that the depositor can, at a later stage, use it in all other variations, and this also applies to a symbol, a design, or a graphic of particular effect. Otherwise, if the name is weak, it is better to protect it together with a graphic in order to give it a more marked and distinctive character.
To protect the trademark from infringements, it is very important to understand the difference between these types of trademarks: whilst for the stronger trademarks we have infringement even when the imitation is well hidden, for the weak trademarks it is usually sufficient to make a few modifications to avoid the possibility of confusion.
[Classes, analysis and research]
It would be wise to register the trademark both as a word and as a word and graphic, so to have a double protection and, in the case of a weak mark, meaning very descriptive of the product, registering different variations to avoid any loopholes.
Another aspect to consider when registering a trademark, is the choice of products and services for which this would be used and which must be accurately described in the application.
According to the Industrial Property Code, the trademark’s owner has the right to the exclusive use of it and can prevent third parties from using an identical or similar for identical or similar products or services, in the case of likelihood of confusion relating to the similarity; if the trademark also has a famous reputation, then this right is extended also to dissimilar services or products (art 5; Art. 20).
Therefore, it is important to carefully identify the classes which need to be covered, this in order to avoid any conflict with other similar classes to the ones claimed for other trademarks, and to get the right to prevent in future the trademark’s utilization for classes of products or services that have commercial interest. This is an extremely delicate and intricate analysis even for experts in the subject, mainly due to the impossibility of having, at low costs, a complete prospect of the registrations related to equal or similar trademarks for identical or similar classes, and also because, even at high costs, it would be difficult to have a complete research report, due to the normal delays involved in the updating of the databases.
[Community and international trademarks]
Even though the research and analysis are essential to correctly move and to operate in good faith towards third parties, there will nevertheless always be a margin of doubt, as in the end, the judge is the only person entitled to decide over complex situations, where it could be difficult to say whether there is or not infringement, as sometimes both parties may be in the right to some degree.
It is also possible to deposit International, Community trademarks or in individual foreign countries, but these procedures are usually very complex and to continue is advisable to contact a professional on this field.
On this site an on-line service is available for the costs evaluation, it is totally free of charge and it allows having an estimate of the expense necessary for the deposit.
Law: D. Lgs 10.02.2005 n. 30