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TRADE MARKSA trade mark is a sign which distinguishes the products or services offered by a company from the products or services offered by other companies. All signs which can be represented graphically can be registered as trade marks: words or logos, shapes or packagings of products, sounds, combinations or shades of colours. According to Italian law now in force (Industrial Property Code) a trade mark in order to be registered must be:
1) new (no identical or similar signs on the market with regard to products or services which are identical or similar to the ones concerned by the new application);
2) distinctive (the trade mark must be able to distinguish the products or services offered by a company from the products or services offered by other companies);
3) lawful (not contrary to public order or morality, not misleading for consumers).
A trade mark can be classified in several ways according to its structure or function. From a structural point of view there is a distinction among word marks, device marks and mixed marks (including both a wording and a device). From a conceptual point of view there is a distinction among fanciful, arbitrary, evocative, descriptive and generic marks. In the last years the so-called shape marks have acquired an increasing value: they can be three-dimensional (shape or packaging of a product) or two-dimensional, and they can not concern shapes which result from the nature of the goods themselves, or which are necessary to obtain a technical result, or which give susbtantial value to the goods.
The office which deals with Italian trade marks is UIBM (Italian Patent and Trade Mark Office), which is a division of the Ministry of Economic Development. The application form, among other things, must include the list of products or services connected to the application, according to the so-called Nice Classification, which gathers into 45 classes the whole range of existing products and services. The filing fees vary depending on the number of classes. Registration is granted, after a merely formal examination, around 3 to 4 years after the application date. An opposition procedure, more or less as it happens in other States, is provided for by the Industrial Property Code and is going to be implemented shortly. A trade mark registration lasts 10 years, counted from the application date, and can be renewed for further 10-year periods.
Trade marks are strictly connected with their territories, and filing a trade mark in Italy does not imply any protection abroad, where third parties may lawfully file the same trade mark. A trade mark application abroad may be filed at the concerned Trade Mark Office, through a local professional representative. On the other hand there are two ways to file a trade mark abroad which imply both a simplified procedure and remarkable savings:
1) community trade mark (CTM): managed by the Office for Harmonisation in the Internal Market (OHIM) based in Alicante, it grants to its owner an exclusive rights in the 27 member States of the European Union; a CTM is examined only with regards to its distinctive character, and it is published in order to allow third parties to file an opposition, if this is the case;
2) international trade mark: managed by the World Intellectual Property Office based in Geneva, it is not a single IP title but rather a unified procedure concerning the steps of application, registration and renewal, through which one or more States belonging to the so-called Madrid System may be designated; the objections and oppositions to registration are issued and managed by the designated National Offices.
In case of States which are not members of the European Union and/or of the Madrid System it is possible to file single national applications.
Europatent-Euromark S.r.l. has been advising its clients since 1988 with regard to Italian, Community, International and foreign trade mark applications, thanks to its experience in the IP field and to a consolidated network of foreign associates.
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