Protecting your intellectual properties represents one of the first steps that should be undertaken when starting a business. IP has, in fact, been identified as the key ingredient for startups across the world to get a competitive advantage in the market.
Registering your Trademark is a step that you cannot skip in the growth-process of your Startup. In fact, trademarks are an effective communication tools that serves to build brand awareness and business goodwill. Moreover, Trademarks make easy for the customers to find you and to speed up the awareness process of your existence.
The legal framework of Trademarks, however, is not completely harmonized throughout the European Union.
On a European level, in fact, the leading legal instruments to take into account when disserting on Trademarks are the Trademark Directive and the Community Trademark Regulation.
Pursuant to art. 2 and 3 TMD and 4 and 7 CTMR, there are three requirements that need to be met in order to register a valid Trademark:
Distinctiveness: The Trademark must be capable of distinguishing the goods and services of one undertaking from those of another undertaking. A trademark cannot be descriptive. You cannot by mean of your trademark describe your product.
Graphical representation: it must be capable of being represented graphically (can be a word, letters, number, shapes);
Registration: In EU you have to register your trademark in order to obtain protection.
Generally, there are 3 possible routes for obtaining a trademark protection:
If you want your trademark to be protected only in your country you will have to fil a national trademark procedure, by filling in the national trademark office (Ufficio Italiano Brevetti e Marchi), under national trademark law;
If you want your trademark to be protected throughout the European Union, you should proceed with a community trademark filling. It can be done at OHIM (office for harmonization in the Internal Market, based in Alicante) pursuant to rules dictated by the Community Trademark regulation.
The third way is an international filing. This procedure protects your Trademark all over the world and it can be done at WIPO (World Intellectual Property Organization) through the Madrid agreement/protocol.
Language’s difference represents often a barrier for the harmonization of Community Trademark Registration. In fact, it can happen often that a trademark meets the requirements aforementioned for one country, but it doesn’t for another. One word, for instance, might be distinctive in one language, but descriptive in another.
Trademark Registration Process
The registration process is usually run as follow:
- Choose your trademark, after having conducted a research for prior rights;
- Chose the type of registration process you are willing to do;
- Identify classes of goods/services (cd. classi merceologiche);
- Prepare and submit application;
- Published for opposition;
- Registration completed.
Broadly speaking a Trademark never expires. However, it is subject to maintenance. It must be used genuinely for a period of five years and renewed every ten years in order to maintain protection. If you have filed the trademark, during five years you can simply invoke it against anyone, but after the fifth year, you have to genuine use it to maintain your rights. Otherwise, the trademark could be revoked.