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Why register a trademark
The trademark represents one of the distinctive elements of the company and is fully part of the intangible assets of the same. In order to obtain a monopoly on one's own trademark, it will be necessary to obtain the patent through the application for registration at the Italian Patent and Trademark Office.
Registering a trademark means protecting a part of the company assets, preventing third parties from damaging their image or counterfeiting their products.
All about trademarks
What is a trademark
The trademark represents an element of extreme importance for a company as it identifies a product and / or a service by representing its origin. The registered trademark, indeed, allows the company that advertises it to acquire fame and notoriety allowing greater customer loyalty as well as a growth in superior reputation.
In addition to the reasons just indicated, registering a trademark means investing in something that will represent the added value of the company. In fact, many consumers, even before paying attention to the product, observe the trust placed in the brand, representing this as an element of guarantee as regards origin and quality.
Furthermore, the trademark is fully part of the intangible assets of the company and therefore can represent an autonomous source of income for the company through the licensing or through the sale which can be autonomous or unitary to a company transfer.
Another aspect that should not be underestimated refers to the monopolization of use of the trademark, so much so that through registration the trademark cannot be used by third parties, thus avoiding the phenomena of counterfeiting and illegal use aimed at obtaining an undue economic advantage.
Trademark registration
First of all, it is good to identify the regulatory framework that governs trademarks which is contained in Legislative Decree no. 30 of 10.02.2005 which represents the Industrial Property Code.
The c.p.i. defines in a rather crystalline way what can be registered by providing, in article 7 that "All signs, in particular words, including personal names, drawings, letters, can be registered as a trademark the numbers, sounds, shape of the product or its packaging, combinations or chromatic tones, provided that they are suitable: a) to distinguish the products or services of a company from those of other companies; and b) to be represented in the register in such a way as to allow the competent authorities and the public to clearly and precisely determine the object of the protection conferred on the holder "
This general rule, however, has some restrictions provided for by Article 8 of the Italian Criminal Code. which expressly provides that "Portraits of people cannot be registered as trademarks without the consent of the same and, after their death, without the consent of their spouse and children; in their absence or after their death, parents and other ascendants of the latter, of relatives up to and including the fourth degree. 2. Personal names other than those of those who apply for registration may be registered as trademarks, provided that their use is not such as to damage the reputation, credit or the dignity of those who have the right to bear such names. The Italian Patent and Trademark Office, however, has the right to subordinate registration to the consent established in paragraph 1. In any case, registration will not prevent those who have the right to the name from using it in the company chosen by him, if the conditions referred to in art.21, paragraph 1 exist. 3.If well-known, they can be registered or used as a trademark only by the entitled party, or with the consent of the latter, or of the subjects referred to in paragraph 1 : personal names, signs used in the artistic, literary, scientific, political or sports fields, names and acronyms of events and those of organizations and associations not having economic purposes. as well as the characteristic problems of these. "
It goes without saying, therefore, that if you intend to register a name of a person other than the person requesting registration, they can be registered on a single condition, namely that their registration does not in any way damage the dignity, fame or credit of those who has the right to bear such names. A different case is instead represented by the existence of the so-called notoriety, that is, if the name you intend to register belongs to a famous person, it is only and exclusively the latter who can request protection or who can give consent to registrability.
Equally important is the so-called shape mark that distinguishes the shape, for example, of the container of a drink (just think of the shape characteristics of Coca Cola glass bottles); on this type of trademark there are specific restrictions established by article 9 of the Italian Criminal Code. which provides that "Signs consisting exclusively of: a) the shape, or other characteristic imposed by the nature of the product itself, cannot be registered as a trademark; b) the shape, or other characteristic, of the product necessary for obtain a technical result; c) from the shape, or other characteristic, which gives a substantial value to the product."
Type of trademark
Trademarks can be divided into company trademark and collective trademark, the first type of trademark refers to the products or services of a company while the second has primarily the function of guaranteeing the quality, nature or origin of certain products or services and the subjects entitled to registration correspond to the entities performing this function.
In order to better understand the function of the collective trademark, just think of an entity that, in order to guarantee the consumer the quality and characteristics of a specific product or service, asks for the registration of a collective trademark allowing its use only and exclusively by companies. that meet certain requirements.
Indeed, in order to register a collective trademark, it will be necessary to file the so-called regulation which must guarantee fair treatment and specific controls on the use of the park by the applicant.
The classes of the brand
Of extreme importance for the purposes of registering a trademark is the identification of the so-called classes, which represent the products and / or services on which it intends to seek protection through registration.
In fact, the registration of a trademark does not confer an absolute monopoly on its owner, but rather allows the latter to monopolize the use of the trademark for those products or services of interest.
It is also important to reiterate that if a company intends to extend the protection to other classes, it will not be possible to integrate the already registered trademark but it will be necessary to make a new filing with the indication of the new classes.
Brand validity requirements
A trademark can be registered only and exclusively if it meets three fundamental requirements identified in novelty, distinctive capacity and lawfulness as expressly provided for by the combined provisions of articles 12, 13 and 14 of the criminal code.
News - The trademark is new when there are no identical or similar trademarks already registered, or widely used, for the same products or services that the trademark will identify. Therefore it will always be necessary before requesting the registration of a trademark to carry out the so-called prior art search aimed at identifying any existence of any trademarks that are similar or the same or connected to similar or identical services and products. The possibility of registration is also precluded, even for different classes (different products or services), if the already registered trademark falls within the category of so-called well-known trademarks or those trademarks widely known by the consumer.
Distinctive ability - A sign has distinctive ability when it is able to immediately identify the products or services of a company compared to those of another company. For this reason it is good to prefer brands that contain invented names or images developed by the applicant so that they are not weak. Of course, it can sometimes happen that a weak brand acquires a strong distinctive ability, vice versa a brand that is born strong becomes generic over time due to the so-called vulgarization.
Lawfulness - A trademark must be lawful and therefore not contrary to mandatory rules.
Indeed, the trademark can never be misleading and therefore cannot imply the possession of certain requirements or characteristics of the product or service that the latter does not actually possess. Such a trademark would in fact be considered "deceptive", that is deceptive and as such it would be null.
The pre-use
Our system recognizes protection not only for the registered trademark but also for the so-called de facto trademark characterized by the pre-use that the owner has made of it.
It may happen, in fact, that a subject without registering his trademark still uses it to advertise products and / or services, in this case the Law still confers legal protection, albeit extremely weak, to the user compared to that conferred through the registration, the aforementioned protection is expressly referred to by our civil code in article 2571 which states that "Anyone who has made use of an unregistered trademark has the right to continue to use it, despite the registration obtained by others, within the limits in which previously he made use of it ".
In fact, in the event of an injunction by the subject who has registered his trademark, the owner of the de facto trademark must necessarily demonstrate the pre-use of the trademark and the territory on which it was used through a copious production of evidence.
It may be necessary in some circumstances to carry out an opinion poll in order to verify the existence and above all the knowledge of a similar brand already used in a specific territory.
As it will be easily understood, in order to avoid frustrating one's advertising investments, it is always highly recommended to register the trademark, as this procedure represents the only element to obtain a strong protection of one's right of use.
The decline
The registration of a trademark must necessarily be accompanied by the use of the within five years of registration under penalty of forfeiture. This provision is expressly provided for in Article 24 of the Italian Criminal Code. Therefore, if the applicant for registration does not use the trademark for a period of 5 years, he would lose all patent rights on it.
The domain name
The domain name translated into Italian means "domain name" that is the address that allows you to reach a web space eg: www.ilmiosito.it. The domain name represents a further identifying element of the company and in general corresponds to the brand name; for these reasons, the owner of a registered trademark may exercise his full right to purchase a domain name or may prevent third parties from using it.
Of particular importance is also the possibility for the owner of an earlier trademark to request, in the presence of specific conditions, the attribution in their own name of the domain name purchased by others.
Brand license
As we have said, the brand is fully part of the company's assets and therefore results can be born from this. The trademark, in fact, can generate an economic income simply by acquiring notoriety on the reference market or through specific procedures such as that of the license that allows you to maintain ownership of the trademark by transferring or granting the right of use to a third party.
The license is governed by article 23, paragraph 2 of the c.p.i. which states that:
"The trademark can be licensed, even non-exclusive, for all or part of the products or services for which it was registered and for all or part of the territory of the State, provided that, in the case of a non-exclusive license, the licensee expressly undertakes to use the trademark to distinguish products or services equal to the corresponding ones marketed or provided in the territory of the State with the same trademark by the owner or by other licensees ".
Furthermore, the license of a brand can be exclusive, non-exclusive and territorial.
The exclusive license of a trademark is when the use of the trademark is granted to a single third party and can be a full license, if it concerns all the products and / or services distinguished by the trademark covered by the contract;
Partial license, if it concerns only some products and / or services marked by the brand.
The non-exclusive license of a trademark is the exact opposite of the previous one, therefore the owner of the trademark can grant the use of the latter to several licensees and even in this circumstance the license can be total or partial.
The territorial license of a trademark is useful when the owner of the trademark wants to limit the places in which to grant the license, authorizing the use of the trademark in one or more regions, one or more provinces and so on.
The trademark license represents a very useful tool to produce new profits by making use of the reputation of the trademark itself, in fact with the license agreement royalties - in percentage or flat-rate - applied on the selling price of the products and / or services on which the trademark licensed will be applied.
Registration, exclusive rights, duration and renewal
Following the registration of a trademark, the owner acquires the right to use it exclusively. So much so that the owner of the registered trademark may prohibit third parties from using the trademark in economic activity as expressly provided for in article 20 of the c.p.i. which, among others, states that "The rights of the owner of the registered trademark consist of the right to make exclusive use of the trademark. The owner has the right to prohibit third parties, without their consent, from using in the economic activity:
a) a sign identical to the trademark for goods or services identical to those for which it was registered;
b) a sign identical or similar to the registered trademark, for identical or similar goods or services, if due to the identity or similarity between the signs and the identity or affinity between the goods or services, there is a risk of confusion for the public, which may also consist in a risk of association between the two signs;
c) a sign identical or similar to the registered trademark for products or services, even if not similar, if the registered trademark enjoys a state of reputation and if the use of the sign without just reason allows to take unfair advantage of the distinctive character or the reputation of the trademark or is detrimental to them. "
The exclusive right is consolidated at the moment of registration of the trademark and lasts 10 years from that moment after which it will be possible to renew the protection for a further 10 years. The renewal can take place within the 12 months preceding the expiration or within the 6 months following that moment.