TRADEMARKS – Common pitfalls and how to avoid them
What is a trademark and why is it important to register it?
A trademark is a distinctive sign that allows economic operators to distinguish their goods or services from those of their competitors. Through the trademark, therefore, the consumer identifies the product or service of a given company, distinguishing it from the goods or services belonging to other companies.
Although it is not mandatory to register your own trademark, it is necessary in order to benefit from a range of advantages. First of all, in fact, the registration guarantees the exclusive right to use the trademark, and, above all, it represents an effective protection tool, easily enforceable against counterfeiters. Not to mention economic and tax benefits, as well as the ones deriving from greater brand recognition.
How to register a trademark
Filing a trademark application may seem very simple at first.
In fact, the registration of a trademark can be requested by everyone, by submitting the appropriate forms to the UIBM (Italian Patent and Trademark Office), through the Office’s electronic system, the postal system or by contacting any Chamber of Commerce.
For this reason, frequently, the filing of an application for a trademark registration is carried out directly by the owner of the same.
However, in order to ensure adequate protection for the trademark you intend to register, it is essential to evaluate some technical-legal aspects, which cannot be deduced directly from the filing forms.
First of all, a trademark can be registered in various forms. The most common are the word mark, consisting of words without graphic elements, the figurative trademark, consisting of an image or a logo, and the combined trademark, in which an image or logo is also accompanied by a verbal component.
1. Pitfall: Trademark filed in the wrong form
One of the most frequent pitfalls is represented by an incorrect choice of the form in which you file the trademark. Not infrequently, in fact, you may come across applications for registration concerning trademarks composed of different elements, some of which are of limited – if not completely absent – distinctive character, the addition of which weakens the protection conferred on the most distinctive component.
Trademark registration requirements
The trademark to be registered must necessarily meet certain requirements as well, established by the Intellectual Property Code (Legislative Decree no. 30 of 10 February 2005 and subsequent amendments) and by the relevant implementing regulations (Ministerial Decree no. 33 and subsequent amendments). In the absence of even one of them, the application for trademark registration will be refused ex officio for absolute grounds of invalidity or may be opposed by third parties.
Article 7 of the IPC provides, first of all, that the signs – in order to be registered – must be capable of distinguishing the goods or services of a company from those of others, and must be represented in the register in such a way as to enable the subject matter of the protection – conferred on the proprietor – to be clearly and precisely determined.
In addition, the Italian law requires that trademarks, in order to be registered, must meet the requirements of novelty (Article 12 of the IPC), distinctiveness (Articles 7 and 13 of the IPC), and lawfulness (Article 14 of the IPC).
Finally, Articles 9 and 10 of the IPC provide for additional grounds for refusal of registration, respectively, for shape marks and for marks that include coats of arms, heraldic elements and other signs of public interest.
Whilst the cases of trademark filings that do not comply with the requirement of representability in the register are marginal, there are numerous applications for registration that are rejected for lack of novelty, distinctiveness or lawfulness.
2. Pitfall – Not carrying out a trademarkclearance search prior to adoption
First of all, it should be clarified that a trademark is new when there are no identical or similar trademarks already registered or filed (or very widely used) by third parties for goods or services identical or similar to those in relation to which the application for registration will be submitted.
Filing a trademark without carrying out a prior art search is therefore another of the pitfalls that it is advisable to avoid committing.
Although they are not mandatory, such searches are a useful tool for tracing the presence of signs identical or similar to the one of interest in the trademark registers, which have been already filed or registered in the name of third parties, in relation to the same product categories. Even though they do not detect the existence of the so-called de facto trademarks – i.e., trademarks used but not registered by third parties – prior art searches make it possible to significantly limit the likelihood of adoption of a trademark highly exposed to the risk of being challenged or opposed by third parties.
3. Pitfall – Filing trademarks without distinctive character
As already mentioned, in order to be registered, a trademark must also have distinctive character, i.e., it must be capable of distinguishing the goods and services of a given company from the goods and services of competing companies.
In order to prevent one’s application for registration from being refused ex officio, a descriptive trademark must not be filed, that is, a trademark consisting exclusively of signs or expressions that describe the goods or services distinguished, or a characteristic thereof.
In case of interest in a trademark of this type, it may be possible to consider filing the same in combination with a particularly characterizing graphic design and/or additional distinctive verbal elements. In this circumstance, however, the protection conferred by the registration will be limited to the trademark version subject to filing considered as a whole, since it is not possible to claim exclusive rights on the descriptive component of interest.
4. Pitfall – Filing misleading trademarks
It should also be considered that the presence of certain indications within one’s trademark – such as dates or geographical names – could lead to the rejection of the respective application for registration due to deceptiveness.
In detail, a trademark is misleading when the message it conveys (to the consumer) is likely to mislead the public, in particular as to the geographical origin, the nature or quality of the goods or services covered.
Therefore, at the time of filing and regardless of their truthfulness, it would be advisable to avoid presenting trademarks containing indications of this kind, also in the light of the fact that they would not contribute to increasing its distinctive character.
Identification of products and services of interest
At the time of filing an application for registration, the goods and services for which the trademark protection is sought must be indicated, making reference to the International Classification of Goods and Services, better known as the Nice Classification.
5. Pitfall – applying for trademark registration for goods and services not of interest
Another frequent pitfall is represented by the incorrect identification of the product classes and, more specifically, of the products and services of current or potential interest that will be distinguished by the chosen trademark.
In such a circumstance, one could expose the trademark to the double risk of obtaining an ineffective registration, as it is not suitable for protecting the sign for core business goods and services, and of receiving complaints from third parties in relation to goods and services not of interest.
Requirements for the use of the registered trademark
Finally, Article 24 of the IPC provides that “Under penalty of revocation, the trademark must be put into genuine use by the proprietor or with his/her consent, in connection with the goods or services for which it has been registered, within five years from the registration, and such use must not be suspended during an uninterrupted period of five years, unless the non-use is justified by a legitimate reason.”
6. Pitfall – filing a trademark different from the one actually used
In order to protect one’s registration from the risk of revocation and, above all, to ensure adequate protection of one’s trademark, at the time of filing figurative or combined trademarks, it is necessary to present the sample that will actually be used.
In this regard, it should be pointed out that the use of the trademark that presents variations with respect to the registered version, provided that they are minor modifications that do not alter its distinctive character, is treated by law as the use of the trademark. In such cases, it is still advisable to consult with an expert in order to evaluate the best strategy to be taken.
In this article, only some of the pitfalls frequently made when filing an application for trademark registration have been briefly exposed, with the aim of offering the readers a tool for initial orientation on the subject.
However, contrary to what it may seem, the Intellectual Property subject can sometimes be quite articulated and complex.
For this reason, in case of doubts or perplexities, it would be prudent to consult with a professional firm, able to provide you with the necessary assistance when it comes to adopt the best strategy for filing and protecting your trademark.
Our consultants are available to assist you in order to obtain the most suitable protection for your needs.