Trademarks
Introduction
Pursuant to Italian trademark law (Article 7 of the Industrial Property Code – Legislative Decree No. 30/2005) “A trademark, registration may consist of any sign, in particular words, including personal names, designs, letters, numerals, sounds, the shape of the goods or of their package, or combinations or shades of color, provided that such signs are capable of: a) distinguishing the goods or services of one undertaking from those of other undertakings; and b) being represented in the register in a manner which enables the competent authorities and the public to determine the clear and precise object of the protection afforded to its proprietor”.
The trademark therefore enables an entrepreneur to secure exclusive rights in relation to the products manufactured or the services provided under a certain trademark. The constant evolution of industrial and commercial relations calls also for strategic business decisions aimed at protecting and enhancing the value of distinctive signs, while enabling their direct or indirect exploitation, including through licensing and merchandising.
The following sections describe the search and filing procedures generally applicable with a view to protecting a trademark in Italy and abroad.
Prior art searches
As a general principle, any trademark filing should be preceded by appropriate availability searches aimed at ascertaining whether any third-party prior rights (including trademarks, corporate names, trade names, domain names, etc.) exist that could potentially prevent the use and registration of the proposed trademark in the relevant territory.
The type and scope of the searches, or the appropriate search package, will be assessed on a case-by-case basis, taking into account the countries of interest and the specific requirements of the project.
Filings
As a general rule, the first step is to protect the trademark in Italy by filing an appropriate application. The national trademark application may subsequently be extended abroad, claiming priority under the Paris Convention, within six months from the date of the first filing. In such a case, the legal effects of the resulting applications for registration will take effect from the priority date.
The protection of a trademark abroad can be implemented in different ways. It is usually advisable to protect the trademark, in countries where the products are exported (or the services rendered) and where they are presumed to be marketed (or the services rendered) in the short to medium term; in countries where direct competitors operate; in countries with high counterfeiting rates and known for trademark “piracy” activities (Far East and South America).
The European Union Trade Mark, once granted, provides protection in all Member States of the European Union, which currently comprise: Austria, Belgium, Bulgaria, Cyprus, Croatia, Denmark, Estonia, Finland, France, Germany, Greece, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Czech Republic, Romania, Spain, Slovakia, Slovenia, Sweden, Hungary.
Under the international trademark registration procedure, a single application may be filed through the Office of Origin and forwarded to WIPO to seek protection for a trademark in multiple countries party to the Madrid Agreement and/or the Madrid Protocol, as selected by the applicant. Each designated country will then examine the application in accordance with its own national legislation and may either grant or refuse protection.
In countries not covered by an EU trademark registration and/or the aforementioned international conventions, trademark protection may be obtained by means of a national filing, in accordance with the procedures and requirements set forth under the applicable laws of the country concerned.
Maintenance of rights and monitoring
As a general rule, and subject to certain exceptions in some countries, trademark registrations have a term of ten years from the filing date and may be renewed for further ten-year periods.
The legislation currently in force in many countries, including Italy, provides that where the owner of a trademark has tolerated, for five consecutive years, the use of a trademark identical or similar to its own, the owner may no longer seek a declaration of invalidity of the later trademark or oppose its use, except where the later trademark was applied for in bad faith.
In order to prevent circumstances that may jeopardize the exclusive rights acquired, we recommend considering trademark watch services covering the registers of the countries in which the trademark has been filed or registered, as well as countries that are otherwise of strategic and/or commercial importance in relation to the relevant business activities. This will enable the timely identification of third-party applications for identical and/or similar trademarks that may adversely affect the relevant rights and, where necessary, allow appropriate action to be taken promptly.
As a further complement to the overall framework outlined above, it is also possible to establish domain name watch services, which make it possible to identify domain names that correspond to or contain the trademark of interest, irrespective of the type of extension (TLDs – generic extensions such as .COM, .NET, .ORG, etc.; new gTLDs – new extensions such as .BRAND, etc.; or ccTLDs – country-code extensions such as .IT, etc.).