RIGHTS GRANTED BY REGISTRATION
Exclusive rights of the owner of trademark registration are granted through registration according to IP Italian Code. The effects of first registration start from filing date and last 10 years, with renewal faculty.
Under penalty of expiring, the use of the trademark should be effective by the owner or by a third party with the consent of the owner for 5 years from the registration date, and the use should not be suspended for a non-stop period of 5 years.
Trademark registration grant the owner the right of exclusive use. The owner of a registered trademarks has the right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion, that could even consist in a risk of association between the two signs.
In case of “well-known” trademark, the prohibition to use identical or similar trademarks can concern even goods/services different from those in respect of which the trademark is registered.

WHO CAN FILE TRADEMARK APPLICATION
Trademark registration can be obtained by physical person, legal entity or Public Administration that uses the trademark or intends to use it, in production or trade of the goods or in rendering of the services that originate from the owner or a controlled company or a company having the owner consent.
Trademark application can be filed only:
1. by the Applicant directly;
or
2. by an Attorney at Law or a Registered IP Agent, in the name and behalf of the Applicant.
No one else can represent the applicant in order to file a trademark application.
Therefore attention should be paid when it is not clear the quality of Attorney or of registered IP Agent.
 
IMPORTANT DECISIONS CONCERNING TRADEMARK APPLICATION
Check of requisites for trademark registration and protection
Requisites for trademark validity are:
- novelty: the trademark should be novel, that means that it can not be identical or similar -  confusingly similar to an earlier trademark registered for identical or similar products, or to a company name or a trade name etc. of competitors operating in the same field. To this purpose our Law Firm can provide identity and similarity search in order to check any pre-existence of filed or registered trademark. Besides, a trademark should not consist exclusively of signs that have become customary in current language or in established practices of the trade.
- distinctiveness: the trademark can not consist exclusively of generic denomination of goods/services or in descriptive indications related to them, as signs or indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service. Our Law Firm always check these grounds, providing the Client with advice concerning best solutions in case of critical situation with reference to the requisite of distinctiveness. (Please see the document concerning confusingly similar trademarks).
- lawfulness: the following shall not be registered: trademarks which are contrary to public policy or to accepted principles of morality; trademarks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service; signs which may be prohibited by virtue of an earlier right: a right to name, a copyright, an industrial property right.
Denominative trademark – Figurative trademark
Denominative trademark is made up of a word or an assembly of words. It consists only of words, without any design or further graphic characteristics than simply words. Word-trademark application is intended to protect words in any graphic representation.
When filing a figurative trademark application, protection is claimed with reference to exact graphic representation of the sign according to the application instead. (being safe anyway protection even against confusingly similar trademarks).
Therefore the most important thing is to decide whether to file a denominative trademark application (only word or group of words), or a figurative trademark application (only images, or word & design, or words represented in distinctive graphic representation or colour), or to file two different applications, one denominative  (with the denominative element that characterizes the trademark) and one figurative (with the design, with or without denominative element). Our Law firm provides the Client with assistance when making this important decision.
Selection of the classes of goods/services
In order to file a trademark application, goods/services intended to be distinguished with the trademark have to be indicated. To the purpose of rationalizing the choice of goods/services, 45 goods/services classes have been individuated. The applicant may indicate one or more classes and with reference to each class can further on specify products or services intended to be protected by trademark application (please see Nice classification). Our Law firm provides the Client with assistance when making this important decision.
 TERRITORIAL EXTENSION OF PROTECTION
Italian trademark – Community trademark – International trademark
Fundamental decision concerns the territorial extension of the right, for this purpose you may choose:
1. National trademark: the application is filed in front of Italian Patent and Trademark Office (U.I.B.M.) and the protection covers the whole Italian territory;
2. Community trademark: the application is filed in front of Office for Harmonization in the Internal Market (OHIM – based in Alicante, Spain) and the protection covers European Union;
3. International trademark: the application is filed in front of World Intellectual Property Organization (WIPO, based in Geneve, Switzerland), through U.I.B.M., and is based on a national or Community trademark registration or application; the protection can cover any of the Countries belonging to Madrid System the Applicant may indicate, according to business interests.
Our Law firm provides the Client with assistance when making this important decision.


WHY USE A LAW FIRM TO FILE A TRADEMARK APPLICATION

If the Applicant chooses to receive assistance from a Law Firm in filing a trademark application, the representative can be only an Attorney or a registered IP Agent. In order to provide the Client with advice in the above mentioned matters and appropriate assistance when filing trademark application qualified knowledge of IP Law and Jurisprudence is required.
Moreover our Law Firm can assist the Applicant in IP-related matters, as transfer contract or licence agreement, and, most importantly, protection against infringements and defence in case of third-party claim.

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For further information send an e mail to info@infogiur.com or call +39 0521 223260