The trademark is, therefore, a distinguishing tool from the competition, but it is also a powerful vehicle of communication with consumers.
The trademark must be protected, managed and defended so as to meet precise, differentiated and jointly evaluated professional standards, which accurately identify the countries and the goods and/or services to be protected. Therefore, accuracy and precision in the preparation of an application to register a trademark are essential steps for obtaining registration.
Our consultants, assisted by qualified foreign colleagues, assist the client in the layout and preparation of trademark applications worldwide.
Brunacci & Partners offers assistance at all stages, from the preparation and filing of applications for the registration of trademarks in Italy and abroad, to advice and assistance in examination procedures.
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Registering a trademark allows the owner to protect all signs that can be represented graphically (words, names of persons, drawings, etc.), sounds, shapes (of the product or its packaging), colors or combinations of colors, when they are intended to distinguish one’s goods or services from those of competitors.
Although there are no precise rules for identifying and choosing how to register a trademark, we suggest that the following general principles be followed:
Create a trademark that is immediately perceived by the public and is easy to write, read, remember and advertise;
Check, by carrying out a prior art search, the existence of any earlier identical or similar trademarks that could potentially prevent registration;
Comply with legal requirements to avoid having your application rejected;
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, in order to avoid that the registration of a trademark is rejected, it is advisable to avoid imitating already 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 issues, hardly leads to the registration of the same.
For example, COCO CHANEL®, owned by the company 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 impossibility to register the trademark and a probable lawsuit for infringement of another person’s trademark.
Yes, the Community Trademark, or EU Trademark (EUM) is valid with a single application for registration in all member countries of the European Union. Whenever a new country joins the European Union, the protection of already registered Community Trademarks automatically extends to the new member.
The European Trademark is valid for 10 years and can be renewed indefinitely for periods of other 10 years.
No, there is no such thing as registering an international trademark that is valid worldwide. The filing of an international trademark application does not automatically take effect in all member countries, on the contrary, it is the applicant who, when filing, must choose and explicitly state in which countries they intend to obtain trademark protection.
You can extend the protection of the Italian trademark or the EU trademark to other countries at any time. In the first 5 years of life, the international trademark exactly follows the path of the extended national trademark. For example, if the national trademark ceases to exist, then so will the corresponding international trademark.