The Trademark

  1. What is a trademark
  2. What can be registered as a trademark
  3. Types of trademark: the collective trademark
  4. A trademark for each product
  5. The validity requirements of the trademark
  6. The exclusive rights of the holder of the trademark
  7. Registration, duration and renewal
  8. Expiry
  9. Validation
  10. The “unregistered” trademark
  11. Domain names

1. What is a trademark

A trademark is a sign that identifies a good or a service. It has important functions and has a huge relevance in the success of a business activity. Trademark in Italy is governed by Industrial Property Code, or CPI. The main function of the trademark is that of the “origin” since, thanks to the trademark, the origin of a product or of a service of a certain company is recognized. The trademark serves also to spread and increase the reputation of an entrepreneur and the trust on the part of the purchaser. Often, in fact, the trademark attracts more than the product itself and consumers trust the trademark before trying a new product. Merchandising is an evident example of how a trademark, born with the primary function of indicating the origin of a good or service, becomes an autonomous asset of great value. For those who initiate an activity, to register their own trademark has a strategic importance which is really relevant, it increases the reputation and allows to put in the safe a good destined to increase its economic value in an exponential measure. It is not casual that in company assignments the trademark often represents the most important and most desired asset.

2. What can be registered as a trademark

Art. 7 CPI (Industrial Property Code) states that the following can be registered as a trademark in Italy: «all signs that are susceptible of being represented graphically, in particular words, including the names of persons, drawings, letters, numbers, sounds, the form of the product or of the package thereof, chromatic combinations or tonalities, provided they are suitable to distinguish the products or the services of a company from those of other companies.» Nevertheless, regarding the possibility of registering as a trademark the name of a person, the various national regulations often put limits of different nature. As per the Italian regulations, art. 8 CPI foresees that the name of a person that is different from the name of the person who applies for the registration of a trademark can be registered on condition that it does not damage the fame, the credit or the decorum of the person who is entitled to carry such a name. However, if these names belong to famous people, they can only be registered by those famous people, or with their consent. Particularly complex to register and defend during a legal action, but often very useful to stop the imitative effect of competitors on historical products of a company, are shape marks, i.e. those marks that consist of the shape of a product that has to be such as to render the product recognizable also without the addition of another mark. Above all, it has to be a shape that does not “require” an explanation of technical reasons. Art. 9 CPI in fact foresees that «The following cannot constitute object of registration as a company trademark: the signs consisting exclusively of the shape imposed by the nature itself of the product, by the shape of the product necessary to obtain a technical result, or by the shape that gives a substantial value to the product.» An analogous norm exists also in the Regulations on the Community trademark. To determine when a shape “gives a substantial value to the product” is a complex question that is often discussed in courtrooms.

3. Types of trademark: the collective trademark

The trademarks that we are acquainted with and that we mostly talk about also in these pages are company trademarks, which identify, precisely, the goods or the services of a company. There exists, however, a particular type of trademark that has the function of guaranteeing the origin, the nature or the quality of certain goods or services and that can be registered only by entities that have an analogous function. The most common case is that of the Consortiums that register a collective mark and then allow the companies that respect certain requirements to use it, thus guaranteeing consumers the quality and the characteristics of certain goods or services. In order to obtain a collective mark it is necessary to follow a specific procedure and in particular in the application phase “rules” on the use of the mark have to be filed which will guarantee an equal treatment and controls on the use of the mark by the person who applies for the registration thereof.

4. A trademark for each product

It is good to know that registering a trademark does not mean to monopolize in an absolute way the use of the sign or of the word chosen, impeding others to use it in any way. The trademark actually confers its holder the right to use it in an exclusive way only for those goods or services of his interest that will have to be accurately indicated in the application and for those goods or services that can be considered similar. For this it is important to make your consultant understand well what wants to be protected and for what the mark wants to be used so as to allow the best possible identification of the goods or services to protect. In case a company later widens its own activity, further trademark registrations might be necessary to allow the best possible protection.

5. The validity requirements of the trademark

A trademark, to be valid, has to be NEW, LICIT and provided with DISTINCTIVE CHARACTER. The trademark is new when there do not exist identical or similar marks, or very widely used ones, already registered for the same goods or services that the mark is going to distinguish. Therefore, before choosing to adopt a mark it is good rule to do a search to check that the sign chosen is not already in use at least for goods or services similar to those that want to be offered. It is always not new the mark that is identical to a known mark even if it was to be used for goods or services different from those distinguished by the mark, since in that case the known mark has what is called a “multi-product/service group” protection. A mark has to be also licit and therefore not to offend others or the sense of “good behavior”, but above all it has to be provided with distinctive character and therefore be as much as possible an invented sign or word. In fact, it is allowed also to file applications for trademarks that contain words that make understand what good or service is referred to, but that obviously do not coincide with the name of such a good or service; in that case, however, said marks will be “weak” and therefore more easily imitated by competitors. Instead, if the mark chosen is a name that is very different from the good or service that wants to be distinguished, the protection offered will be greater and in that case we will speak about a “strong” mark. Sometimes a sign that is born weak or lacking distinctive character can become a mark validly defendable if after the use that has been made of it it has acquired distinctive character. It is the so-called “secondary meaning”. On the contrary, a mark that is born as distinctive but becomes, after the use thereof, a generic name referred to a good can lose its protective force by the effect of the so-called “vulgarization”.

6. The exclusive rights of the holder of the trademark

The holder of the mark acquires the exclusive right to make exclusive use of the trademark. In particular, as clearly foreseen by art. 20 CPI, «The holder has the right to ban third parties, except by giving his own consent, to use in the economic activity: a) a sign identical to the mark for goods or services identical to those for which it has been registered; b) a sign identical or similar to the registered mark, for goods or services identical or similar, if due to the identity or similarity between the signs and to the identity or affinity between the goods or services, a risk of confusion for the public can be created, which can consist also of a risk of association of the two signs; c) a sign identical or similar to the registered mark, for goods or services also not similar, if the registered mark has a state of fame and if the use without a fair cause allows to profit unduly from the distinctive character or from the fame of the mark or damages the same.» Therefore, the identity of marks and goods/services is never admitted, while in case there is similarity it is necessary to check if there exists a risk of confusion. In case the mark is very famous the use thereof is never admitted, also for goods or services that are different when the person who uses the mark profits unduly from the fame of the pre-existing mark or somehow damages it.

7. Registration, duration and renewal

The exclusive rights conferred by law to the holder are obtained with the registration of the mark. The rights are valid from the filing date of the first application for registration of the mark and last 10 years, at the expiry of which it is possible to renew the mark for further 10 years by filing a renewal application. Art. 19 CPI foresees that «1. The registration of a company trademark can be obtained by a person who uses it or proposes to use it, in the manufacturing or commerce of goods or in the provision of services of the own company or of companies of which he has the control or that make use thereof with his consent. 2. The registration of a company trademark cannot be obtained by a person who has filed the application in bad faith.» Therefore, a registered trademark can be obtained even after using it on condition that it is proposed to be used in a reasonable period of time, which the Italian law has stipulated within 5 years as from registration date.

8. Expiry

As foreseen by art. 24 CPI, a mark has to be used within five years as from the registration “under penalty of expiry”. Therefore, the person that does not use the mark for five consecutive years after the registration risks to lose it, above all if any other person proceeds with the registration of that mark in turn. The law foresees some exceptions to this rigid rule but they are very limited, therefore it is good to use the mark to keep it alive.

9. Validation

In the same way a valid mark can expire, a null mark, on the contrary, can “become valid” or be validated. This happens when the holder of a pre-existing mark has omitted to initiate legal actions against the holder of a subsequent mark, of which he knew the existence, and five years have passed from the date of registration of the subsequent mark. This is basically the only hypothesis in which two marks, also identical, can coexist and be both valid.

10. The “unregistered” trademark

Apart from the registered trademark, in our regulations there exists also the “unregistered” mark, which is a mark used without having been registered. This mark guarantees a weak protection and is subject not just to the risk of infringement but also to the eventuality that others proceed with the registration thereof before the person who used it in the first place. The experience shows that registering a mark is very convenient both because of the reduced costs and because of the huge practical and economic advantages that derive from such a registration. Nevertheless, the unregistered mark implies some kind of protection but can be defended in a court action on condition that it is shown, with sufficient proof, that that mark, even if not registered, has been widely used in the territory so as to have acquired a certain fame. The proof will have to be furnished by who wants to defend that mark through the exhibition of sales invoices but above all of newspaper articles, advertising campaigns and all that can be useful to show the diffusion thereof. Sometimes it becomes necessary also to conduct a specialised investigation of demoscopic type on the knowledge that consumers have of the mark. With the registered mark all this does not serve since it will be enough to show to have obtained the registration of the mark to ask for the protection thereof.

11. Domain names

The domain name is the Internet address through which a site can be reached (our domain name, for example, is “ufficiobrevetti.it”). The Industrial Property Code has recognized the domain name as a distinctive sign; therefore, if certain conditions are present, it assumes an analogous force to that of an unregistered mark and its pre-existence can be an obstacle to the registration of subsequent marks identical to it. On the other hand, the holder of a mark can impede others to use that mark as a domain name and, if the assumptions exist, he can also recover the Internet domain name of his own interest and have it assigned to himself.