Practical guide for businesses and professionals
Dear Customer,
A brand is much more than just a “name” or a logo: it is the element that encapsulates the identity, reputation and commercial value of your business.
Registering a trademark correctly, in Italy or in Europe, is a fundamental strategic step.
In this article, we will explain what a trademark is, what choices to make before registering a trademark, how to proceed with registration in Italy with the UIBM (Italian Patent and Trademark Office) or how to proceed with registration with the EUIPO (European Union Intellectual Property Office), if you want to obtain a trademark that is valid throughout the European Union.
Finally, what are the most common mistakes to avoid?
What is a trademark?
A trademark is any sign that distinguishes the goods or services of one company from those of its competitors.
By way of example, trademarks can be:
Word marks: words or combinations of letters,
Figurative marks: logos, graphic symbols,
Mixed marks: combinations of words and logos,
Three-dimensional marks: the shape of a product or its packaging, if distinctive,
Position marks, pattern marks, colour marks, etc. (in the most advanced forms of branding).
Registered trademark and de facto trademark
Without registration, a sign may enjoy limited protection as a de facto trademark. In this case, protection is more uncertain and more difficult to enforce. It is often limited to the area where the trademark is actually known, and the burden of proof of use lies with the entrepreneur in the event of a dispute.
By registering, however, the entrepreneur can obtain exclusive rights to use the trademark for specific products or services and in a specific territory. Third parties can be prevented from using identical or confusingly similar signs. In this way, the trademark becomes a valuable corporate asset (think of transfers, licences or franchising). This provides a strong legal basis for any legal action, warnings or hypothetical oppositions.
Duration of the recording
Both Italian and European Union trademarks are valid for 10 years from the date of filing and are renewable upon payment of the relevant fees.
Before filing
Before submitting an application to the UIBM or EUIPO, it is important to make some preliminary decisions.
Define the sign clearly
You must always ask yourself whether the name is truly distinctive (not purely descriptive of the product/service) and whether the logo is legible and recognisable. You must also assess whether the sign complies with the law (not misleading, not contrary to public order, not infringing on the rights of others) and whether it is too generic or descriptive.
Identifying products and services: the Nice Classification
Trademark protection is not “generic” but only applies to the products/services listed in the application, divided into classes according to the Nice Classification. It is therefore necessary to prepare a clear list of the products/services of interest. Furthermore, it is important not to restrict the field too much so as not to have to proceed with a new application if the business expands. At the same time, it is not advisable to include completely unrelated classes just ‘to be on the safe side’. Both the UIBM and the EUIPO require the Nice Classification to be used for applications.
Conduct a prior art search
Before proceeding, it is advisable to carry out a prior art search to check whether identical or similar trademarks already exist in Italy or in all Member States of the European Union. The prior art search is a very important step that reduces the risk of opposition. A targeted prior art search also avoids investing in a brand that cannot be used freely. In addition, this search will verify whether there are any conflicts with strong trademarks already on the market.
Our firm also conducts professional research with confusion risk analysis.
Select the geographical area: Italy or the EU?
If you operate solely or mainly in Italy, it makes sense to consider the Italian trademark (UIBM).
If you operate or intend to operate in several EU countries, or if you have an e-commerce business with European customers, the EU trademark (EUIPO) may be a more strategic solution.
Registering a trademark in Italy (UIBM) – Step-by-step guide
The Italian Patent and Trademark Office (UIBM), now part of the Ministry of Enterprise and Made in Italy, is the competent authority for the registration of national trademarks. Applications can be submitted electronically via the UIBM online services portal (recommended method) or at Chambers of Commerce (paper application). Today, the most efficient, fastest and, in many cases,
The most cost-effective method is online filing. The UIBM charges different fees depending on the number of classes: a basic fee for filing in a single class and an additional amount for each additional class. Once the application has been filed, the UIBM will carry out a formal and substantive examination to verify that the application is complete and that the trademark complies with the legal requirements. In the event of any critical issues, the Office will issue observations to which it is possible to respond within a certain period of time, with the assistance of a professional. Applications deemed registrable are published in the Official Trademark Bulletin. Owners of prior rights may file an opposition within three months of publication. If no oppositions are filed (or if they are rejected or settled), the trademark is registered and the UIBM issues the registration certificate.
Registering a European Union trade mark (EUIPO) – Step-by-step guide
The EUIPO (European Union Intellectual Property Office) is the European office that registers European Union trademarks valid in all EU countries with a single title. The main advantages of the EU trademark are broader territorial coverage (27 Member States), a single filing procedure and a single basic fee, which is then increased according to classes.
In this case too, the duration is ten years and is renewable, as for the Italian trademark. Following registration, there will be a formal and substantive examination (absolute grounds) by the EUIPO, which will verify whether the application is complete and whether the trademark falls under any grounds for exclusion. If no absolute grounds for refusal emerge, the trademark is published in the EU Trademark Bulletin. From the date of publication, there is a period of three months during which holders of prior rights may file an opposition. In the event of opposition, a cooling-off period will begin in order to attempt to reach an agreement. If no agreement is reached, the dispute will enter the litigation phase (exchange of briefs, evidence and subsequent decision by the EUIPO).
If there are no objections or if they are resolved positively, EUIPO registers the trademark and issues a digital registration certificate, valid in all EU countries.
In the course of our work, we see recurring mistakes such as choosing a descriptive/generic name, which risks making the trademark weak and therefore unregistrable. Often, no one thinks to carry out an appropriate prior art search. This leads to filing a trademark ‘blindly’, resulting in a high risk of oppositions and litigation, with the associated additional costs.
A poor choice may result in having to change your trademark after years of use. It should be added that the procedures before both the UIBM and the EUIPO have very precise rules and deadlines: responding incompletely or after the deadline may result in the application being rejected. Finally, after 10 years, without renewal, the trademark expires and can be registered by third parties, with the risk of losing years of investment.
How we can support you in practical terms
Our firm assists companies and professionals in all phases of trademark protection, offering: preliminary assessment of the registrability of the mark, priority searches in Italian, European and international databases, strategic choice between Italian, EU and/or international extensions, drafting and filing of trademark applications with the UIBM and EUIPO, managing dialogue with offices (surveys, observations, requests for clarification), assistance in oppositions and disputes, in Italy and before the EUIPO, monitoring renewal deadlines to avoid forfeiture of rights.
If you would like to check whether your trademark is registrable, find out whether it is better to file an Italian or EU trademark application, or receive a personalised quote for the application and complete management, please contact us. A professional will be at your disposal.
With this article, Studio Carone wishes you a Merry Christmas and a Happy New Year.