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Contracts: Could you tell me what are the requirements to be fulfilled in case of transferral or modification of the rights related to international trademarks? Is the transcription necessary as for the national ones or does it come automatically with the request of transcription of the act at the italian patents and trademarks office?

Could you tell me what are the requirements to be fulfilled in case of transferral or modification of the rights related to international trademarks? Is the transcription necessary as for the national ones or does it come automatically with the request of transcription of the act at the italian patents and trademarks office?

In case of transferral of an International trademark it is required transcribing it at the World Organization of Intellectual Property where it was registered, the transcription at the Italian Patents and Trademarks Office is not sufficient as this is valid only for the Italian trademark application and not for the international one. The procedure to be followed though is very different and less formal as all that is required is an act of transferral undersigned by both parties, but it is not necessary to have the signatures certified by the Notary as, instead, is required for the Italian applications. Once this is ready, it is enough to send a formal request at the Office, the form for this can be downloaded directly on the WIPO Internet site (www.wipo.it) and which is very simple, a part from the difficulties that can be found in filling it in English or French. The transcription of change of ownership gets registered only if the fee for this has been paid, this must be forwarded as a Bank transfer in Swiss francs in favour of WIPO. The transferral of the mark is effective only after this procedure is concluded, whilst up to then the ownership remains in the name of the original owner. To make the transcription a consultant in Industrial Property can be used and at the same time, if one wants, he can also be appointed as a representative in the procedure.