The trademark: identity and communication
A trademark is not only a distinguishing element from competitors but also a powerful communication tool with consumers. For this reason, it is crucial to protect and manage it strategically, ensuring that it meets precise professional standards and is adequately protected in the countries and sectors of interest.
The importance of accurate registration
Brunacci & Partners, thanks to expert consultants and collaboration with qualified foreign professionals, offers comprehensive support in preparing trademark registration applications at the international level. Our service covers all stages of the process, from filing the application to providing advice during examination procedures, ensuring effective trademark protection over time.
The importance of accurate registration
For a trademark to be effectively protected, it is essential to prepare a precise and detailed registration application. The selection of products, services, and protection territories must be carefully evaluated to ensure the highest level of protection and increase the chances of success in the registration process.
Is the international trademark valid worldwide?
No, there is no international trademark registration that is valid worldwide. The filing of an international trademark application does not automatically have effect in all the member countries. On the contrary, the applicant must explicitly select and indicate the countries in which they wish to obtain trademark protection at the time of filing.
The protection of an Italian or EU trademark can be extended to other countries at any time. In the first 5 years of its existence, the international trademark follows exactly the same path as the extended national trademark. For example, if the national trademark ceases to exist, the corresponding international trademark will cease as well.
Is the EU trademark valid in all European Union countries?
Yes, the European Union Trade Mark (EUTM) is valid with a single application across all member countries of the European Union. Every time a new state joins the European Union, the protection of already registered community trademarks automatically extends to the new member.
The European Trade Mark is valid for 10 years and can be renewed indefinitely for additional periods of 10 years.
How to choose the trademark to register?
Although there are no precise rules to identify and choose how to register a trademark, we suggest respecting the following general principles :
Create a brand that is immediately perceived by the public and that is easy to write, read, remember and advertise;
Verify, by carrying out a prior art search , the existence of any prior trademarks, identical or similar, and potentially hindering registration;
Comply with the legal requirements , in order to avoid the rejection of the registration application;
Ensure that the trademark does not have a negative connotation and, in general, that it is not contrary to public order or morality either in the language of origin or in the languages of potential export markets;
If possible, register the corresponding domain name (or Internet address).
In any case, to avoid the refusal of trademark registration, it is advisable to avoid imitating existing trademarks , since the simple alteration of a competitor's trademark, or the imitation of a well-known trademark, in addition to giving rise to counterfeiting phenomena, is unlikely to lead to the registration of the trademark itself.
For example, COCO CHANEL® , owned by CHANEL SARL, is a registered trademark for cosmetic products. The adoption of a COKKÒ CHENEL trademark to distinguish similar products would most likely lead to the trademark being unregistered and a probable cause for trademark infringement by others.
What does it mean to register a trademark?
Registering a trademark allows the owner to protect all signs that can be represented graphically (words, personal names, designs...), sounds, shapes (of the product or its packaging), colors, or combinations of colors, when they are used to distinguish their products or services from those of competitors.
