- The preliminary choice
- How to file an Italian trademark application
- The procedure of registration
- The opposition by third parties
- The appeal against the Office’s decisions
- Withdrawal and limitation of the application
- Assignment of the trademark
Before filing a trademark, it is necessary to choose how to file it, whether verbal or graphic, in which classes to register it and where to register it.
Once the preliminary analysis has been done carefully and, as it is always advised, with the help of an expert consultant in the field, the filing of the application for registration can be done.
There exist two types of applications:
- the first filing application, which is prepared when a trademark is filed for the first time,
- the renewal application, which is instead used when the renewal of an already existing trademark has to be applied for at the expiry of the 10 years.
In both cases the trademark application has to be prepared in different ways. We will here deal with the first filing application.
The process is not so easy and it is always recommended to turn to qualified professionals.
As alternative, it is possible to contact the Chamber of Commerce but this office does not offer consultation but files online the trademark application prepared by the user only.
For filing the application for registration of a trademark it is necessary to fill in a specific form online, where the information on the trademark, and the classes of goods or services that the mark wants to protect have to be indicated.
The choice of the classes has to be made with particular care by consulting the Nice Classification of reference and paying attention to controlling which the edition in force is at the moment of the filing of the application.
It will not be possible anymore to indicate the number of the class but it will be necessary to make a list of the goods and the services of interest.
A sample of the mark will have to be attached, in colors or black/white according to the choice that has been made; administrative fees and official fees will have to be paid, which vary on the basis of the type of trademark and of the classes that are chosen. To know the fees in force at the moment of the filing of the application, we suggest you consult the Italian Patent and Trademark Office’s website.
In case of application for registration of a collective mark, a copy of the rules on the use of the mark has to be attached as well.
To prepare well the application for registration is as important as to analyze well the sign before filing it since, on the basis of these preliminary choices, the possibility of defending the trademark in case of infringement is higher or lower.
The assistance of an expert consultant is therefore essential to be able to have the best possible protection.
A first formal and technical examination is carried out by UIBM (Italian Patent and Trademark Office) that checks the formal compliance of the application (Art. 148 and 156 IPC) and the absence of the so-called absolute grounds for refusal. For example, a mark contrary to morality can be dismissed from the office, as well as an offensive mark.
If the trademark office passes this exam, then it is published in the Trademark Bulletin that is available to the public.
Since then, any holder of an earlier identical or similar trademark or anyone considering that the trademark application violates its own right, may fileopposition to the registration before UIBM within three months from the publication date.
If an opposition is filed, an administrative procedure is opened, where the person who made the application for registration can defend itself against those who oppose to the granting of the trademark. At the end of the opposition proceedings, it is issued a decision that may result in the granting or refusal of the trademark.
If instead, no-one has opposed, the mark is granted and a date of grant is assigned. Then the holder can collect its registration certificate.
It is good to remember that by pre-existing rights it is not intended only preceding Italian trademarks but also Community or international trademarks that have validity in Italy.
Art. 176, par. 5, IPC foresees that:
An opposition may be used to claim the impediments to registration of the trademark established by Article 12, paragraph 1, letters c) and d), for all or a part of the goods or services for which registration has been requested, and the lack of consent to registration by the qualified persons identified in Article 8
This means that the ground for opposition may be:
- The trademark for which registration is required is identical to its trademark for identical goods or services;
- The trademark for which registration is required is identical or similar to its trademark for identical or similar products or services, if the identity or similarity between the signs and the identity or similarity of the goods or services can create a risk of confusion for the public, which may also consist in a likelihood of association between the two signs;
- Lack of consent by the person entitled to register as trademark: portraits of people, of names of people, if known, signs used in the artistic, literary, scientific, political or sports field, names and acronyms of events and those organizations and associations which have no economic purpose;
In order to file opposition, it is necessary to fill in a specific form that is available online on the Italian Patent and Trademark Office’s website, to attach a copy of the preceding trademarks or proof of the preceding rights and motivate adequately the complaint. Moreover, the opposition fees foreseen at the moment of the filing will have to be paid.
Once the opposition has been received and its admissibility has been checked, the UIBM informs the applicant and assigns to the parties a term to file proof and arguments to support their own reasons, after which it issues a decision.
In this phase, it is of fundamental importance to be assisted by an expert consultant since the documents that have to be filed will have to contain legal argumentations that are often very complex.
Also decisions issued at the course of Opposition can be challenged before the Appeals Commission.
The Appeals Commission is composed of magistrates and professors nominated by decree of the Ministry of the Economic Development. The sentences of the Commission can be challenged before the Supreme Court.
Given the nature of the procedure it is necessary to be represented by an Attorney at Law or by an Industrial Property Consultant, not just for the particular difficulty of the subject but also considering what provided for by law.
At any moment between the filing of the application and the grant of the trademark, who has filed the application can always withdraw it (and therefore renounce to it) or limit it, for example by reducing the number of classes initially claimed.
It may be necessary to withdraw or limit the trademark, for example, when there is a conflict with a third party that claims pre-existing rights.
Amendments to the trademark application can be made but only within rigid limits and without altering or widening the substantial protection of the trademark.
An amendment not just allowed but due is that relative to the change of address of the holder.
Changes in the registry, withdrawals and limitations have to be communicated to the office by filing a specific petition for recordal.
A trademark, apart from used, can be assigned or licensed to third parties. In the first case, it is something analogous to a sale, by which the trademark changes “owner”; in the second case, it is a sort of “rent” with which the use to third parties is granted.
The trademark assignment contracts are very delicate.
It is necessary in fact to have a wide knowledge of the trademark that is being sold, but above all acquired, therefore a technical analysis is appropriate for checking that the trademark is alive, that there are no potential or real conflicts, that there are no co-existence agreements and the like. All that is obtained by making the trademark undergo an accurate analysis (the so-called due diligence) without which there is the risk of purchasing an “empty box”. Another relevant aspect is that of the value of the trademark, something that is not easy to assess without the help of an expert.
The assignment, or license, of a trademark has to be recorded with the Italian Patent and Trademark Office with a specific petition for recordal. The recordal is necessary for the effectiveness in front of third parties and above all to safeguard the assignee or licensee party.