Register your trademark

If you wish to receive professional advice and assistance with the registration, we can file your trademark application within a few days. Send us the details we need to provide you with our quote, by completing the form hereunder. But prior to this, please review the information under the form, for an explanation of ​​how the registration process works and how to complete the form accurately.

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TRADEMARK REGISTRATION: WHAT YOU NEED TO KNOW

Some people believe that registering a trademark is a trivial operation: you complete a form, pay the registration fees and you get the trademark registration. Actually, this is not the case. Before filing a trademark, legal assessments and strategic decisions must be made which will then determine the extent of the trademark protection and its strength. Applications for registration that are not completed correctly may be rejected, without reimbursement of the related costs, or may not later give the protection that the applicant expected.

  1. Word trademark or figurative trademark?

Simplifying, a “traditional” trademark can basically be one of three types:

  1. a word trademark, i.e. one or more standard signs (word, number, letter, symbol) regardless of the graphic form in which they are written: e.g. “ADIDAS”
  2. a figurative trademark, i.e. a particular figure: e.g.
  3. a combined trademark, that is a combination of the above two types: e.g. .

A single application must be filed for each type of trademark. Hence, if you have a trademark consisting of both word and figurative elements, ideally you should file three applications, i.e. one for the word(s) alone, one for the figure(s) and one for their combination. Nevertheless, due to budget constraints or other reasons, it might be preferable to file only one or two of the three In short, there are many factors to consider, and the assessment must be made on a case-by-case basis, also taking into account the relevant case law (that’s why we are here!).

  1. Other types of trademarks?

There are other types of registrable marks: three-dimensional marks, colour marks, sound marks, pattern marks, motion marks, multimedia marks, holographic marks. The European Union Intellectual Property Office provides some examples here: https://euipo.europa.eu/ohimportal/en/trade-marks-examples.

  1. For which products and services?

The application for registration must indicate the specific products and/or services for which the trademark is requested, i.e. those for which it is intended to be used.

The goods and services are grouped into classes, numbered from 1 to 45, according to the Nice Classification. Here you can find the classes corresponding to your products / services: http://euipo.europa.eu/ec2/.

Please note that:

– the cost of registration increases with the increase in the number of registration classes;
– a little foresight is useful in identifying the products / services of interest, because these cannot be added after the application has been filed: an addition would require a further independent application for trademark registration;
– as a rule, it is not advisable to register the trademark for products / services which will not be used within 5 years of registration, because of the risk that the trademark could lapse due to non-use. Duly identifying the products / services for which the trademark should be registered is not always easy. But we will help you also in this!

  1. In which Countries?

A trademark should be registered in each State where it is intended to be used and protected.

Single national applications can be filed in each of the Countries of interest, in which case:

  • filing fees and taxes apply to each State;
  • each application will be examined by the relevant national IP office;
  • possible oppositions will be filed before and decided by the single national IP office;
  • after registration, any subsequent activity (e.g. renewals) shall be carried out before the single national offices, with the payment of the relevant fees and taxes.

However, at a European level it is possible to file a single trademark application. In this case:

  • filing fees and taxes apply to the single EU application and are much cheaper than those resulting from single national filings;
  • the application will be examined by the EU Intellectual Property Office (EUIPO) only;
  • possible oppositions will be filed before and decided by the same EUIPO only;
  • upon registration, a single EU trademark will be issued which will cover all the Countries of the European Union. Renewal fees and taxes will apply to this single trademark and will be much cheaper than those required by single national registrations.

Finally, it is also possible to file a single international application for registration of the trademark in dozen Countries worldwide. The list of Countries where this registration is available can be found here: https://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf.

In this case:

  • filing taxes apply to each State and are in line with those required by single national registrations, but filing fees are cheaper;
  • the application will be examined by the single national registration offices involved, and possible oppositions will be filed before these, but all communications will come through one single body that is the World IP organization (WIPO);
  • many activities like submission of the application, payment of taxes and renewals will be centralized and therefore cheaper and easier to handle than with the filing of single national registrations.

We will help you in deciding which kind of application should be filed depending on your Countries of interest.

  1. Before applying: is the trademark available?

Before filing a trademark application, you should carry out an availability search among the previous trademarks, to verify that there are no prior trademarks identical or similar to the one you would like to register.

This is useful, among other things, because, if you choose a trademark that is identical or similar to another previously registered one, the owner of the previous trademark could oppose the registration, thus starting an opposition procedure that would have additional costs and could lead to the rejection of the application (without reimbursement of the relative costs and indeed with the obligation to pay the costs for the opponent’s defense). Furthermore, regardless of registration, the use of an identical or similar trademark to an earlier one entails the risk of being sued for infringement and compensation for damages, or at least to receive a warning letter requiring that you to stop using the trademark.

  1. What happens after the filing of the application?

The registration office examines the application to verify that it is admissible and, in the event of a positive verification, publishes it. Upon publication, a period of time begins during which the owners of earlier trademarks can oppose the registration (that is three months for Italian and European trademark applications). Once this period has passed without opposition, or in case the opposition is abandoned or dismissed, the trademark is registered.