Trade Mark Registration

Trade marks are registered for classes of goods or services according to an international classification known as the Nice Classification. Goods and services are grouped into 45 classes, based on their type, relationship, or function. At the time of filing a trade mark application, it is mandatory to specify the classes of goods or services for which the trade mark is intended to be used. Once the application has been filed, it is not possible to add classes or goods not originally claimed. The cost of registration depends on the number of classes selected and consequently increases considerably as the number of chosen classes increases. It is therefore important to proceed with a correct and balanced classification.

There is no international or worldwide trade mark, in the sense of a trade mark valid in itself throughout the entire world. A trade mark registration is a title that is valid only in the territory of the states in which it is registered, for the goods and/or services claimed. As a rule, one proceeds first with an Italian or EU filing and then with any extensions, making use where possible of the so-called right of priority. The right of priority allows someone who files a first national or EU registration application to extend protection abroad within 6 months, maintaining the date of the first filing. This blocks third-party registration attempts and facilitates international expansion without immediate costs. It is important to underline that the registration of a trade mark in one or more countries does not confer the right to register the same trade mark in other countries. Therefore, since between the first filing of a trade mark and its possible extension in another country of interest, third parties may file an application for registration of an identical or confusingly similar trade mark for the same goods or services, it is advisable to carefully evaluate the choice of countries of interest at the time of filing the trade mark. Trade mark registration may be carried out through individual national filings, through EU filings (valid in member states) and/or through International Registration applications.

To register a trade mark in Italy and abroad, it must possess three fundamental requirements: novelty, distinctive character, and lawfulness. The trade mark must not already exist or be confusingly similar to others, must clearly distinguish the company's goods/services, and must comply with the law, public policy, and accepted principles of morality.

The following are excluded from registration:

•  trade marks lacking distinctive character;

•  trade marks composed exclusively of generic signs or indications, or signs that have become common in current language or commercial practice;

•  trade marks incompatible with public policy or accepted principles of morality;

•  trade marks that may mislead the public, for example as to the nature, quality, or geographical origin of the goods or service.

With regard to their greater or lesser distinctive character, trade marks are divided into strong and weak marks. Weak marks, which are descriptive or evocative of goods and services, are more difficult to register and protect.

Through the mechanism of secondary meaning, a mark originally weak or lacking in distinctive character (as it is descriptive or generic) may acquire distinctive character and legal validity through intensive and prolonged use. Through advertising and recognition, the public associates the sign with a specific company, thereby transforming it into a strong mark.

It is possible to register corporate trade marks, product or service marks, collective marks and certification marks.

Depending on the case, one may proceed with word, figurative, composite, two-dimensional or three-dimensional, colour, multi-colour or greyscale filings, with or without a pay-off, etc.

The choice depends on several factors, such as the type of trade mark, the client's primary interest, the outcome of the searches, and the consequent filing strategy, which is fundamental.

Collective and certification trade marks are distinctive signs that guarantee the quality, origin or specific characteristics of goods/services, distinguishing themselves from individual marks. A collective mark is managed by consortia/associations for their members, whilst a certification mark is issued by independent third-party bodies to attest to the characteristics of a product.

The Collective Mark aims to guarantee the origin, nature or quality of goods/services of multiple companies, often linked to a specific geographical area. It is normally filed by consortia, trade associations, or public law entities, and its use is reserved for association members who comply with a "regulations of use". Examples: Parmigiano Reggiano, Prosciutto di Parma, craftsmen's association marks.

The Certification Mark aims to ensure that goods/services comply with specific quality or production standards, attested by a third party. It is filed by natural or legal persons who do not carry out the supply activities of the certified goods/services, and its use is granted to anyone who complies with the product specification. Examples: TÜV SÜD, ecological quality marks, Woolmark.

The rights conferred by the registration of a trade mark on its owner run from the date of filing of the registration application and have a duration of 10 years. At the expiry of the period indicated, it is possible to renew the trade mark registration, for all or some of the classes applied for, by filing a renewal application for a further 10 years. It is not possible to add classes and/or modify the trade mark attached to the first filing.

No annual fees are payable for maintaining a trade mark registration in force; however, certain countries such as the USA and the Philippines periodically require the filing of proof of use, failing which the trade mark is cancelled. This procedure may involve additional costs.

Almost all national and international regulations governing this matter provide that the registered trade mark must be used within five years of registration, and that use must not be interrupted for periods of more than 5 years, otherwise the trade mark is subject to the risk of revocation proceedings, at the request of an interested third party. It is therefore important to correctly calibrate the international extensions of one's trade mark in order to avoid exposing it to cancellation actions for non-use.

Upon application by third parties to the competent offices, the owner of a trade mark registration may be declared to have forfeited their rights if:

-   for a period of five years the trade mark has not been the subject of genuine use;

-   due to the action or inaction of its owner, the trade mark has undergone vulgarisation, i.e. it has become the common name for a product or service;

-   the trade mark has become deceptive or misleading, for example where the trade mark has a geographical reference that adds value and the owner has moved the production facility to another location, or where it refers to a raw material that is no longer used.

Even if formally accepted, in the context of proceedings with or without examination on the merits, a trade mark registration application and/or registration may be subject to opposition and/or invalidity actions by third parties who are owners of earlier rights such as applications/registrations for trade marks or designs, copyright, rights arising from the regulations protecting company names, business names, domain names, well-known signs, etc.

The filing of an opposition or invalidity application initiates a procedure that involves the assignment of time limits and an exchange of written submissions and arguments between the parties involved. If no agreement is reached, the decision lies with the Office, with three levels of review.

The decision may result in the refusal/cancellation of the registration in whole or in part, or only for certain goods or services.

A declaration of invalidity of a trade mark has retroactive effect: the trade mark is considered to have had no effect from the outset, whereas in the case of revocation, the trade mark is no longer valid from the moment the revocation takes effect (i.e. from the date of the application to EUIPO).

It is therefore essential to correctly carry out all preliminary checks on registrability and freedom to use before proceeding with the registration of a trade mark.

Legal protection for a national trade mark is limited to the territory in which it is sought. In Italy, trade marks are registered with the UIBM – Ufficio italiano brevetti e marchi. The registration procedure does not involve any examination; the trade mark is protected for 10 years from the date of filing of the application.

The official bodies responsible for the registration of trade marks are:

The costs of registering a trade mark depend on its type (individual, collective, certification), on the filing, publication and grant fees, etc., which vary from country to country, and on the fees of the consultants, Italian or foreign, involved.

The professionals at BIESSE are authorised to represent clients before the UIBM, EUIPO and WIPO. For national foreign filing procedures, on the other hand, it is necessary to engage the services of a local agent, who interfaces with the office.

To calculate the filing fees, it is necessary to identify the type of filing (national, EU, International Registration), the type of trade mark (product or service mark, collective mark, certification mark, etc.) and the number of classes of goods and/or services for which the exclusive right is sought.