How to register a trademark

  1. What to register
  2. The novelty search
  3. The classes of goods and services
  4. Who can register a trademark
  5. How long a trademark lasts
  6. In which states it is protected
  7. The priority
  8. The difference between ® and ™

1. What to register

A mark is any sign that identifies a good or a service. A name, one or more words or a name with a particular image or even only an image, a sound or a particular combination of colors, numbers, letters, even an object, can be registered. Coca-Cola’s bottle, or the package of Toblerone chocolate, are registered trademarks. Harley Davidson’s rhombus or the shape of the Smart automobile are registered trademarks. In order for a trademark to be registrable it has to be new, but in Italy a trademark that has been registered abroad can be registered as well (something that is not possible for patents) on condition that it does not have a gained notoriety and the registration does not take place in bad faith. In order for a trademark to be registrable, it has to have distinctive character as well. To evaluate the existence of these assumptions is a question that is rather delicate, above all when a non traditional trademark wants to be registered, such as a shape mark, a sound mark or a color mark.

Registering a trademark allows to have the exclusive right on the use thereof in the state in which it has been registered and for the goods and services that have been indicated in the application for registration (the so-called Classes). The person who has a registered trademark can therefore impede others to use an identical or similar sign to his own in the commercial activity, can use it exclusively or can license it to others by paying a compensation (royalty). Before registering a trademark important decisions have to be taken. In the first place, it is necessary to choose whether to file a trademark consisting exclusively of words, words and image or just an image. In the first case, the holder of the sign has the exclusive right to use it with any image, while in the second case it is protected only in the combination words/image filed. In the third case, last, the protection concerns only the logo filed. Another option is that of choosing to file the words/logo in black/white or in colors. In fact, in the first case the holder is protected for all colors and the combinations of colors that he will give to his mark, in the second case only for the combination chosen and filed. The choice of the type of mark requires a complex work that has to be performed with the maximum attention to avoid to infringe others’ trademarks.

When a new word is invented or created to identify a service or a good, it is necessary to bear in mind that the newer and more fanciful the mark is, the stronger it will be and the more it will be protected from imitations. For example, using marks consisting of the verb “clean” for detergents for the house will make consumers understand perfectly what we are talking about but will hardly allow to impede competitors to use the same verb, which is descriptive of the product. If, instead, for that detergent a word will be used that does not have any relation with it, for example “Flash” or “Cocomer”, that mark will make consumers understand not much about the product but it will be a hardly imitable mark.

2. The novelty search

The first thing to do is, undoubtedly, a novelty search. Before choosing a sign as an identification of the own company or of a product, it is in fact of utmost importance to check that it has not been registered yet by others since if this were the case, there would be the risk of having to change it and maybe be obliged to pay damages. We remind you that the Italian office, as well as most offices, does not do a novelty search, therefore a mark can be granted even if an identical mark that has been registered before exists. The searches on trademarks present a certain degree of difficulty since it is not enough to check that there do not exist identical marks to the one that wants to be filed but it is also necessary to check that there do not exist “similar” marks, and to establish when this similarity remains is often rather difficult from the technical point of view. The search has to be read taking into account the classes of goods and services for which the mark is used and analyzing the situations of possible conflict. If from that search there comes out a pre-existing similar mark, it will be adequate to choose another name and start from scratch; on the contrary, you may proceed with the study of the image and the registration. The mark can be only a word, only an image, or a word and an image, according to the type. An innovative word that indicates in a strong and determined way a product or a service deserves to be registered in itself, independently of the image adopted, in such a way that the person who files the mark can use it in all the stylistic variations that he desires and the same can be done for a symbol, a drawing, an image of particular impact. If, instead, the name is weak, it is better to protect it together with an image so as to confer to it a more marked distinctive character. The difference between these types of marks is seen at the moment when it is necessary to protect the mark in case of infringement: while for strong trademarks there is infringement even when the plagiarism is hidden well, for weak trademarks just a few modifications are normally necessary to avoid confusion. In order to obtain the best protection it is often appropriate to register the mark as a word and as a work plus image so as to have a double protection and, in case it is weak, or rather descriptive of the product, register also some variants of it to avoid swindles. A first screening can be done on the databases accessible online, but for a thorough examination it is necessary to resort to an expert. Moreover, before choosing a mark it is good rule to check if the mark chosen has not already been adopted by others as a domain name on the Internet because this could prejudice the validity of the registration and anyway create confusion in the market, which is never desirable. Also after we have filed our own mark it is advisable to continue to “monitor” it to be sure that others do not register identical marks to ours. This check can be done by resorting to a Surveillance system offered by specialized consultants.

3. The classes of goods and services

Another aspect that needs to be taken into account in the registration phase is that of the choice of the goods and the services for which the mark will be used and that have to be described precisely in the application for registration. On the basis of the Industrial Property Code, the holder of the mark has the right to make exclusive use of the mark itself and to avoid third parties the use of an identical or similar sign for goods or services identical or similar if due to the similarity between them a risk of confusion is created; if a mark that has renown is concerned, this right extends also to the services or goods that are not similar (art. 5; art. 20). It is necessary, therefore, to identify with care the classes that want to be protected both not to enter in conflict with other similar classes to those claimed for other marks, and also to avoid in the future not to able to ban the use of the mark for classes of goods or services that could have anyway a commercial interest. This type of analysis is extremely delicate and complex also for the experts in the field, above all for the impossibility to dispose at reduced costs of a complete overview of the registrations concerning identical or similar marks for identical or similar classes, both because, even if spending a good sum of money, it is difficult to have a search report with complete and up-to-date information due to the normal delays with which the databases are updated. It is necessary to bear in mind that registering a mark does not mean to obtain the exclusive right for the use of that name in an absolute way, as it is sometimes thought.

When a mark is filed it is necessary to choose the goods and services of one’s own interest by using the classes of goods/services of the Nice Classification.

Both the identification as well as the subsequent description are very important because they have to take into consideration not only the real productive direction of the company but also the future choices. In fact, once the application for registration has been filed, it cannot be amended anymore and to add new goods it will be necessary to file a new trademark application.

4. Who can register a trademark

A legal person or a natural person that does not have a VAT number can register a trademark. A trademark can be in the name of more than one person but in this case it will be necessary to regulate with care the use of the mark that, except for rare exceptions, cannot take place in a disjointed manner. Who registers the mark has to use it or at least has to propose to use it, directly or indirectly, within five years as from the registration. If this does not happen, the mark, even if granted, expires by non-use. Nevertheless, a natural person could always put into effect said use by licensing the mark to a company in case he himself could not use it.

5. How long a trademark lasts

The mark lasts 10 years as from the filing date but (unlike patents) can be renewed without limits every 10 years until the holder desires to do so. The renewal can be applied for by filing an application for registration that is connected to the preceding application or, according to the countries, by filing a petition for renewal and paying the relative fee.

6. In which states it is protected

Trademarks have a territorial validity limited to the state or states in which the registration is applied for.

When a trademark is filed it is necessary to choose whether to file an Italian trademark, effective only in our country, a Community trademark, effective in all the countries of the European Union and automatically extendible also to all those states that will make part of it in the future, or an International trademark, valid in all the countries that have adhered to the relative agreements. Last, it is also possible to file an application for registration of a mark in single foreign states. The choice depends on strategic reasons and has to be made on the basis of the use that is intended to be made of the mark, of the goods or services that it will identify and therefore of the market that may be more appealing to it. It has to be born in mind also that from the filing of the first trademark application there is a period of six months (so-called priority right) within which it is possible to file the mark abroad, and in this way the mark prevails over eventual marks filed in those preceding six months. This allows to initially be able to file an application in Italy and then extend it in a subsequent moment.

7. The “priority”

The “priority” is a right recognized to the person who files a mark for the first time. This right consists of the faculty offered to the applicant to file the same mark in one or more states different from the initial one without being prejudiced by eventual filings that had taken place before with respect to the filing in the new state, but subsequently to the first filing. The priority right for trademarks is of six months as from the filing. Therefore, if a trademark is filed on 1 February in Italy, for example, the same mark can be filed on 20 July in the US and the registration thereof can be obtained even if someone else had filed the same mark in the US in June of the same year. Thanks to the priority right, in fact, the filing of June would not cancel the novelty of our mark of July, which would “date back” to 1 February, date of the first filing. The priority is an interesting mechanism that serves to avoid abuses and to allow the holder to reflect and evaluate the states of possible extension.

Once the period of priority of the mark has expired, it will always be possible to file the mark in other states but the filing date will be that of the actual new filing, also for the purposes of the novelty examination.

8. The difference between ® and ™

The symbols ® and ™ are often found beside some trademarks. The symbol ® is the initial of the term “registered” and indicates that that word is a registered trademark. The symbol ™ is the acronym of “trademark” and indicates that the mark is filed but not yet registered. A registered mark has been approved by the office and has therefore overcome an examination that has different characteristics according to the type of mark that is filed. A filed mark is instead a mark of which the registration has been applied for but that has not overcome the exam yet. Therefore, while the registered mark is, until contrary proof, a valid and fully effective mark, the filed mark could also not be approved.

Nevertheless, both the registered mark and the filed mark can be used to initiate a legal action against a person who uses a sign identical to the mark that has been filed. It should be born in mind that while in Anglo-saxon countries the use of the two symbols is rather rigorous, in Italy the symbols are often used in an unappropriate manner, therefore it is not certain that they correspond to the real condition of the mark.