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TRADEMARK

WHAT IS A TRADEMARK?

The trademark is the business card of a company, a graphic sign that allows you to distinguish the products or services made by a company from those of other companies. A trademark can be graphically represented by words, names, drawings, letters, digits, sounds, colours, shapes or a combination of these.

It allows entrepreneurs to differentiate their products from those of their competitors and it also serves to spread and increase the reputation of a company as well as confidence in consumers. For those who start a business, the registration of a trademark has a truly strategic importance: it increases their reputation, makes the trademark recognizable over time and allows them to have exclusive use all over the country in which it is registered for the products and services that are indicated in the registration application.

TRADEMARK FEATURES

In order to be eligible for registration, a trademark must be NEW, there must be no similar trademarks already registered, LAWFUL or must not offend others or a sense of morality, and with a DISTINCTIVE CAPACITY that is to be able to immediately identify products or services of an enterprise compared to those of another enterprise.

TYPES OF TRADEMARKS

As we will see better and in more detailed way, there are different kind of trademarks: word trademark, figurative trademark, figurative trademark containing word elements, shape trademark, colour trademark, sound trademark, movement trademark etc.

In addition to the trademark registered in the Italian National Patent and Trademarks Offices, a company may also acquire the exclusive right to use the trademark simply by using it, whether the trademark is registered or not (so-called unregistered trademark or de facto trademark).

Trademarks are also distinguished by their impact on the public: a trademark that has a particular originality and that easily stands out in the market is a strong trademark; on the contrary trademarks which are not original and easily imitated by competitors are considered weak.

The national and supranational legislator identifies different kind of trademarks:

  • Collective trademark

It allows to guarantee the origin, the nature or quality of certain products or services and that can be registered only by entities that carry out a similar function.

  • Word trademark

It consists exclusively of words or letters, digits, other standard typefaces or a combination of these.

  • Figurative trademark

It is a trademark in which non-standard characters, a stylization or a layout or a graphic element or a Colour are used, including the trademarks consisting exclusively of figurative elements.

  • Figurative trademark containing word elements

A figurative trademark consisting of a combination of word and figurative elements.

  • Shape trademark

Shape trademark consisting just in the shape of the product or part of it or its packaging. It may include packaging, the itself product or its appearance

  • 3D trademark

A shape trademark can be not only two dimensional but also a three-dimensional trademark, but this is possible only when it is an unusual, arbitrary or fantasy shape.

  • De facto trademark

It is a trademark that is not registered, but only for the circumstance of being used it can be sufficient to obtain a certain degree of protection, since it is considered a distinctive sign useful to make itself recognizable to the public.

The EU and international legislators do not consider this trademark worthy of protection and not insert it in any normative reference. The national legislator grants a bland protection that is derived from the articles 1 and 2 of the Industrial Property Code in combination with the art. 2598 of the Civil Code where it states that the owner of a trademark can activate legal proceedings against third parties who have used a sign similar or identical to its product or service.

  • Olfactive trademark

An olfactive trademark consists of a smell or a combination of smells to which connect certain products or services.

  • Trademark of quality

It certifies the quality of the products present in the market. The best example is the CE trademark (or CE marking) which certifies that the product complies with the EU Directives that govern the market in which it works.

 

The trademarks can also be distinguished in relation to their origin, because are tools of fundamental importance for the fight against counterfeiting and to protect the internal markets and their traditional specificities. They do not require a registration because the protection derives from detailed normative references:

  • Trademark of origin
  • PDO – Protected Designation of Origin;
  • PGI – Protected Geographical Indication;
  • TSG – Traditional Speciality Guaranteed;

 

The recent technological developments in the field of agriculture have configured a contextual evolution of the legislation and of the distinctive signs of the products of the sector.  Therefore, also in this sector it is possible to see particular trademarks, defined precisely biological trademarks.

 

  • Colour trademark (unique or Colour combination)

A Colour trademark is simply a trademark consisting exclusively or of a unique Colour (without contours), or of one combination of Colours (without contours).

  • Sound trademark

A sound trademark consists exclusively of a sound or a combination of sounds

  • Movement trademark

it is a trademark that consists of a movement or of a change of position of the elements of the trademark, or that includes such movement or change.

TRADEMARK REGISTRATION

Registering a trademark is not simple. Appropriate analyses and preliminary research must be carried out in addition to those in progress and ex post.

Registering a trademark does not mean monopolising the use of the chosen sign or word in an absolute way, being able to prevent others from using it in any way. The trademark actually grants its owner the right to use it exclusively only for those products or services of its interest that must be accurately indicated in the registration application and for those products or services that can be considered related. For this it is necessary to proceed with the assistance of an expert.

Furthermore, it is good to know that a trademark is protected only in the state in which it is registered. An Italian trademark therefore has effect only in Italy with the consequence that any other person could register the same trademark outside Italy and boast exclusive rights in those territories. If you want to obtain trademark protection in one or more foreign countries, you will need to register the trademark individually in the states of interest or choose the European trademark that allows you to protect the trademark in all the states of the European Union or the International trademark with which your trademark can be protected in a considerable number of states worldwide.

 

It is really important for the trademark to have a solid filing and that is why Studio Rubino, with their team, is able to support his customers in all the necessary stages for registration and filing.

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