Trademarks insight

Italian trademarks

TRADE MARK FUNCTIONS

The role of a trade mark is to distinguish a company’s goods or services from those of other companies. Therefore these signs are designed to allow the public to choose between the various options available on the market.

The law expressly requires that these signs are also represented graphically.

RIGHTS DERIVED FROM REGISTRATION

The rights to which the proprietor of a trade mark is entitled are granted with its registration and consist, as the law states, in the power held by the proprietor of a registered trade mark to “make exclusive use” of the said mark. These rights essentially consist of the following:

• the banning of the use of identical signs for identical goods or services;
• the banning of the use of identical or similar signs for identical or allied goods or services if there may be a risk that these would confuse the public;
• the banning of the use of identical or similar signs for non-allied goods or services in the event that the registered trade mark enjoys a reputation within national limits.

The registration has a term of ten years, as of the filing date of the relative registration application, and can be renewed indefinitely thereafter, at ten-year intervals.

For claims purposes in relation to the goods/services concerned by the registration of a trade mark, the classes to which the goods/services belong are listed in the Nice convention.

WHAT CANNOT BE REGISTERED

As outlined in the following paragraph, one of the requirements of a valid trade mark registration consists in the novelty of the said mark; therefore and above all, trade marks which are not new cannot be registered. In addition to these, the following other signs cannot be validly registered:

• signs found to be contrary to law, public policy or accepted principles of morality;
• signs which consist solely of generic names of goods or services relating to the said trade mark;
• signs which consist solely of descriptive indications relating to the said trade mark (e.g. the geographic origin of the goods);
• signs dictated by the nature and form of the goods;
• signs constituted of symbols, emblems and/or coats of arms referred to in international conventions in force and which are of public interest;
• signs which are likely to mislead the public;
• signs whose use would infringe on sole rights held by third parties (e.g. copyright, IP – Intellectual Property rights).

In addition to the cases above, the following items cannot be registered:

• personal portraits, without the permission of the person depicted or, if deceased, that of their heirs, up to and including the fourth degree;
• personal names with the exception of the applicant’s name, in which case the name can be used solely in the event that such use does not bring disrepute on those having the right to bear the said names;
• well-known names and signs without the assignees’ permission (people’s names, abbreviations and emblems of corporations and public events, signs used in the fields of art, literature, science, politics or sports).

TRADE MARK VALIDITY REQUIREMENTS

DISTINCTIVE CAPACITY

This requirement is justified in that it permits the user to distinguish between the many goods/services available on the market. That is why, for example, signs consisting exclusively of generic name of goods and/or services cannot be registered: the word “bread” could not registered as a trade mark as it would not distinguish the said baked product among the countless varieties available on the market.

NOVELTY

For filing purposes, prior to a trade mark registration application date, there cannot be any signs registered which are identical or similar to the trade mark in question or which could be confused with it (even unregistered trademarks in the case of trade marks which enjoy a non-local reputation) in the same class established by the said Nice Convention.

In order to prevent expired or unused trade marks preventing the registration of valid new trade marks, the law stipulates that previous trade marks which have expired by least two years or have not effectively been used within the five years following their registration or whose use has been suspended for an unbroken period, also of five years, cannot invalidate new trade marks.

Signs pertaining to goods and/or services from other classes which interfere with well-known trade marks cannot be considered new, nor can any signs which have come into general use in current language or are regular business practice.

TYPES OF TRADE MARK

DENOMINATIVE TRADE MARK

This trade mark consists solely of words, which can even be imaginary and meaningless.

FIGURATIVE TRADE MARK

This trade mark consists solely of figures (“designs”, as the law states).

MIXED TRADE MARK

This trade mark consists of a set of words and designs.

SHAPE TRADE MARK

This trade mark consists of a shape, which cannot be instrumental (in which case it would fall into the category of Patents for Utility Models) and cannot be ornamental (in which case it would fall into the category of Models). It refers, therefore, to shapes which can be defined as arbitrary.

EXPRESSIVE TRADE MARK

Particularly common in the pharmaceutical sector their content is closely associated with a feature / purpose of the goods it distinguishes and, as such, has immediate impact on the user. This type of trade mark is usually appreciated by manufacturers who, however, should bear in mind that as this is a "weak” trade mark (see following point), it is does not enjoy a great deal of protection. It can be either figurative or descriptive.

DEGREE OF PROTECTION OF A TRADE MARK

This is unconnected with the registration of a trade mark and depends in particular, instead, on its own distinctive capacity.

A “weak” trade mark is one which, with just slight alterations, can be lawfully registered with no infringement of the said weak trade mark (examples of trade marks are expressive trade marks).

A “strong” trade mark is one whose distinctive property is pronounced, and can even be a trade mark which has nothing to do with the goods, or an imaginary trade mark.

It should be noted that a trade mark may well become “strong” following its registration thanks to its use and the effects of its strong advertising.

Unregistered trademarks

Also called “de facto trade marks”, these are protected by Art. 2598 of the Italian civil code, therefore the user of this kind of trade mark has sole rights within the limits of the possibility of confusion. The requirements which the unregistered trade mark must meet however are that it must: be a sign, possess a distinctive capacity, be new (and therefore should not lead to confusion) and not be misleading or contrary to public policy or accepted principles of morality.

Internation trademarks

This is a filing and registration system which is valid in all the countries that are part of the “Madrid Arrangement”. With a single application, the proprietor of a registered trade mark in one of the member countries can apply to the Patent Office in its own country for registration with the International Office in Geneva.
The international registration document constitutes, as the term used in the sector goes, a “bundle” of national registrations; each trade mark is therefore subject to the regulations of each of the member countries.
The international registration application must be filed within six months of the filing date of the registration application pertaining to the corresponding Italian trade mark

OPPOSITION

Objections to trade mark registrations are possible, and must be submitted within the time limits set by the various national authorities.

Objection is open to the following parties:

• the proprietor of a trade mark which is already registered;
• applicants who have filed a registration application for a trade mark prior to the application in question or who claim priority;
• any sole licensee of the trade mark;
• any persons of relatives (up to and including the fourth decree) of persons portrayed in trade marks;
• any persons, apart from the registration applicant, whose names have been registered if this use brings the them into disrepute;
• any persons, corporations or associations, whose names, signs, emblems, in the event that they are well known, can only be registered by the assignees or with the assignees’ permission.

TERM

International registrations remain in force for a period of ten years, and can be renewed continuously for identical periods of time; please note that during the first five years, the International Trade Mark depends on the use of the registered trade mark in the county of origin while, further to this period, it becomes independent of the continuing protection or, lack thereof, in that country.

Community trademarks

Unlike the International Trade Mark, the Community Trade Mark is applicable throughout the entire European Community territory and its use, when prohibited, is prohibited throughout the entire territory. .

WHO CAN FILE A REGISTRATION APPLICATION?

• Natural and legal persons with citizenship or nationality of a member country of the Community Patent Convention.
• Natural and legal persons with citizenship or nationality of a member country of the Paris Convention.
• Natural and legal persons with citizenship or nationality of a member country of the World Trade Organisation.
• Natural and legal persons with domicile or registered office or with a reputable industrial establishment effectively operating within the European Community territory or that of any of the Paris Convention member countries.The application to register a Community Trade Mark can be submitted directly to the Office of Harmonisation in the Domestic Market, located in Alicante, Spain, or at the Trade Mark Office in the applicant’s own country.

PROCEDURE

The Alicante Office examines the application to verify its formalities and to check for the existence of any of the so-called “absolute impediments” to registration (Art. 7 Regulation 40/94/CE) by searching against registers of previous Community Trade Marks and applications for Community Trade Marks.

A search of the trade marks and the applications for Community Trade Marks is conducted to establish earlier rights. This search is handled by both the Alicante Office and the National Offices of the states which have declared themselves willing to carry out searches of earlier trade marks in their own registers (the Italian, French and German Offices are not included).

The Harmonisation Office in Spain is notified of the national Office’s reply within three months of the application filing date. This reply, together with the results of the earlier trade mark search conducted by the Alicante Office, is immediately forwarded to the applicant.

Publication of the application for a Community Trade Mark. This publication is notified to proprietors of Community Trade Marks and earlier applicants for Community Trade Marks uncovered during the relative searches.Objections to the registration of the new trade mark by the proprietors of Community Trade Marks or earlier applicants for these can be submitted; these will be decided by the Appeal Commissions established at the Alicante Office and the verdicts of the aforesaid Commissions are subject to appeal to a higher Community Tribunal and, subsequently , if necessary, to the Community Court. This clearly means that the EC registered trade mark is supposed to enjoy a quite strong validity.

OPPOSITION

As mentioned earlier, objections to the registration of the trade mark can be raised.

All objections must be filed within three months of the date of publication of the Community Trade Mark application.

Objection is open to the following parties:

• proprietors of trade marks already deposited or registered either nationally or as Community Trade Marks;
• licensees authorised by the proprietors of earlier trade marks;
• proprietors of firms or signs (only in certain cases).

TERM

The Community Trade Mark remains in force for a period of ten years, which can be renewed indefinitely for identical periods of time.