Trademarks

• an indispensable legal and commercial means of promoting the company’s products or services on the market,
• the necessary passport of the company and its products to the market, especially in today’s society
• is the object on which the company creates its image
• the main tool of communication towards consumers,
• reflects the quality of the product or service offered
• and distinguishes them from that of competitors,
• the contractual strength for the producer,
• the competitive advantage for the retailer
• and a guarantee for the consumer.

All signs capable of being represented graphically, in particular words, including personal names, designs, letters, numbers, sounds, the shape of the product or of the packaging of it, the combinations or chromatic shades, provided that they are capable of distinguishing the products or services of one company from those of other companies. Basically, the sign must be suitable for distinguishing the goods and/or services on which it is intended to be affixed.

Exclusive Trademark rights are conferred upon registration.

The effects of the first registration start from the filing date of the application. Since it is a renewal, its effects start from the expiry date of the previous registration. The registration has effect limited to the products or services indicated in the registration itself and to similar products or services.

The rights of the owner of the registered trademark consist in the right to make exclusive use of the trademark. The owner has the right to prohibit third parties, subject to his consent, from using in the economic activity:

• a sign identical to the trademark for goods or services identical to those for which it was registered;
• an identical or similar sign to the registered trade mark, for identical or similar products or services, if due to the identity or similarity between the signs and the identity or affinity between the goods or services, there may be a likelihood of confusion for the public, which may also consist in a risk of association between the two signs;
• an identical or similar sign to the registered trademark for products or services, even if not similar, if the registered trademark enjoys a state of renown and if the use of the sign without just cause allows unfair advantage to be taken from the distinctive character or the reputation of the trademark or bears injury to them.

The trademark owner may in particular prohibit third parties from:

• put the sign on the products or their packaging;
• to offer the products, to place them on the market or to hold them for such purposes,
• or to offer or provide the services marked by the sign;
• to import or export products bearing the sign itself;
• to use the sign in business correspondence and advertising.

Registration lasts ten years from the date of filing the application, except in the case of renunciation by the holder. Of course, upon expiry, the trademark can be renewed for successive periods of 10 years.

Under penalty of forfeiture of the trademark, the trademark must be used effectively and such use must not be suspended for an uninterrupted period of 5 years, except for legitimate reasons. The use of the same in a modified form but in such a way as not to alter the distinctive character, as well as the affixing of the trademark on export packaging in the State are treated as use of the trademark.

The subjects who perform the function of guaranteeing the origin, nature or quality of certain products or services can obtain registration for specific trademarks as collective trademarks and have the right to grant the use of the trademarks themselves to producers or traders.

The Regulations concerning the use of collective marks, the controls and the related sanctions must be attached to the registration application; the regulatory modifications must be communicated by the owners to the Italian Patent and Trademark Office to be included among the documents attached to the application.