- The preliminary choices
- How to file an Italian trademark application
- The procedure of registration
- The opposition by third parties
- The appeal against the Office’s decisions
- Withdrawal and limitation of the application
- Assignment of the trademark
1. The preliminary choices ↑
Before filing a trademark it is necessary to choose how to file it, whether verbal or graphic, in which classes to register it and where to register it. It is also important to do a novelty search to make sure that the mark that has been chosen has not already been registered by others. If you have not already done so, we suggest you read the section Registering a trademark, which gives useful advice on the matter.
Once the preliminary analysis has been done carefully and, as it is always advised, with the help of an expert consultant in the field, the filing of the application for registration can be done. There exist two types of applications: the first filing application, which is prepared when a trademark is filed for the first time, and the renewal application, which is instead used when the renewal of an already existing trademark has to be applied for at the expiry of the 10 years.
In both cases the trademark application has to be prepared in different ways. We will here deal with the first filing application.
The application for registration cannot be filed directly through the Internet but it can be filed either on paper, requesting and filing the relative forms with the specific office that is found in the Chamber of Commerce, or online but using a specific platform that requires the use of a reading device of a smart card for the digital signature. This last solution is therefore chosen by qualified professionals.
2. How to file an Italian trademark application ↑
For filing the application for registration of a trademark it is necessary to fill in a specific form (Form C), which is found in the Chambers of Commerce and is also downloadable from the Internet. In the form C the information on the applicant, who will become the holder of the trademark, the information on the trademark, and the classes of goods or services that the mark wants to protect have to be indicated.
As we have already said, the choice of the classes has to be made with particular care by consulting the Nice Classification of reference and paying attention to controlling which the edition in force is at the moment of the filing of the application. On the basis of the recent tendencies of the office it will not be possible anymore to indicate the number of the class but it will be necessary to make a list of the goods and the services of interest.
A sample of the mark will have to be attached, in colors or black/white according to the choice that has been made; administrative fees and official fees will have to be paid, which vary on the basis of the type of trademark and of the classes that are chosen. To know the fees in force at the moment of the filing of the application, we suggest you consult the Italian Patent and Trademark Office’s website. In case of application for registration of a collective mark, a copy of the rules on the use of the mark has to be attached as well. To prepare well the application for registration is as important as to analyze well the sign before filing it since, on the basis of these preliminary choices, the possibility of defending the trademark in case of infringement is higher or lower.
3. The procedure of registration ↑
Once the application for registration has been filed, an application number and an application date are obtained, and from that date the examination of the file starts, which is articulated in different phases.
A first formal and technical exam is conducted by the UIBM (Italian Patent and Trademark Office), which checks that the application meets the formal requirements (articles 148 and 156 CPI) and the absence of the so-called absolute impediments to the registration. For example, a mark that is contrary to good behavior can be refused directly by the office, as well as an offensive mark.
Instead, if the mark overcomes this exam done by the office, then it is published in the Official Trademark Gazette, which is public. From that moment anyone who considers himself damaged by the trademark application since he thinks that that trademark is similar to his own pre-existing trademark or because as such it violates his rights can file Opposition to the registration with the UIBM within 3 months as from publication date.
If opposition is filed, ad administrative procedure starts in the course of which the person who has applied for the trademark will be able to defend himself in front of who filed opposition against the trademark registration and at the end of this procedure a decision will be issued that will be for the grant or the refusal of the trademark.
Instead, if no one files opposition the trademark is granted. To the trademark a grant number and date will be assigned and the holder will be able to obtain the relative certificate of registration.
4. The opposition by third parties ↑
Art. 176 CPI foresees that the holders of pre-existing trademarks or rights can oppose to the registration of a trademark within 3 months as from the publication of the application. It is good to remember that by pre-existing rights it is not intended only preceding Italian trademarks but also Community or international trademarks that have validity in Italy.
In order to file opposition it is necessary to fill in a specific form that is available online on the Italian Patent and Trademark Office’s website, to attach a copy of the preceding trademarks or proof of the preceding rights and motivate adequately the complaint. Moreover, the opposition fees foreseen at the moment of the filing will have to be paid.
Once the opposition has been received and its admissibility has been checked, the UIBM informs the applicant and assigns to the parties a term to file proof and arguments to support their own reasons, after which it issues a decision.
In this phase it is of fundamental importance to be assisted by an expert consultant since the documents that have to be filed will have to contain legal argumentations that are often very complex.
5. The appeal against the Office’s decisions ↑
Against the regulations of the Italian Patent and Trademark Office with which the office refuses, totally or partially, an application filed, it is possible to file an appeal with the Appeals Commission (art. 135 CPI). The Appeals Commission is composed of magistrates and professors nominated by decree of the Ministry of the Economic Development. The sentences of the Commission can be challenged before the Supreme Court. Given the nature of the procedure it is necessary to be represented by an Attorney at Law or by an Industrial Property Consultant, not just for the particular difficulty of the subject but also considering what provided for by law.
6. Withdrawal and limitation of the application ↑
At any moment between the filing of the application and the grant of the trademark, who has filed the application can always withdraw it (and therefore renounce to it) or limit it, for example by reducing the number of classes initially claimed. It may be necessary to withdraw or limit the trademark, for example, when there is a conflict with a third party that claims pre-existing rights. Amendments to the trademark application can be made but only within rigid limits and without altering or widening the substantial protection of the trademark. An amendment not just allowed but due is that relative to the change of address of the holder. Changes in the registry, withdrawals and limitations have to be communicated to the office by filing a specific petition for recordal.
7. Assignment of the trademark ↑
A trademark, apart from used, can be assigned or licensed to third parties. In the first case, it is something analogous to a sale, by which the trademark changes “owner”; in the second case, it is a sort of “rent” with which the use to third parties is granted.
The trademark assignment contracts are very delicate. It is necessary in fact to have a wide knowledge of the trademark that is being sold, but above all acquired, therefore a technical analysis is appropriate for checking that the trademark is alive, that there are no potential or real conflicts, that there are no co-existence agreements and the like. All that is obtained by making the trademark undergo an accurate analysis (the so-called due diligence) without which there is the risk of purchasing an “empty box”. Another relevant aspect is that of the value of the trademark, something that is not easy to assess without the help of an expert. The assignment, or license, of a trademark has to be recorded with the Italian Patent and Trademark Office with a specific petition for recordal. The recordal is necessary for the effectiveness in front of third parties and above all to safeguard the assignee or licensee party.
8. Regulations ↑
Legislative Decree 10.02.2005 no. 30 (Industrial Property Code)