Learning to be recognised: the brand

The brand

The brand is, par excellence, the distinctive sign of the company, by which it distinguishes its products on the market from those of its competitors. 

The brand is an important corporate asset and the stronger and more recognisable it is, the more it will be able to bring a competitive advantage to the company, becoming a brand which carries a clearly identifiable identity and values for the consumer. 

The main function of the trade mark is therefore as an indicator of the origin of goods and services, but it can also have the following functions: 

• Advertising (or attractiveness)by concentrating all the value of advertising investments made in respect of a particular product.
• Investmentwith regard to the protection of the trade mark against any third party initiative liable to undermine the effectiveness of the advertising investments committed to the trade mark.
• WarrantyThe consumer expects to find the quality characteristics of the product already known, on other products bearing the same brand name.

All signs, in particular words, including names of persons, drawings, letters, numerals, sounds, the shape of the product or its packaging, colour combinations or shades, may be registered as trade marks, provided they are suitable: 

1. to distinguish the products or services of one enterprise from those of other enterprises; 
2. to be represented in the register in such a way as to enable the competent authorities and the public to determine clearly and precisely the object of protection conferred on the holder¹ .

¹ Art. 7 IPC (Industrial Property Code)

Requirements for registrability

In order to be validly registered as a trade mark, a sign must meet the following requirements: 

• Distinctive capacity²means the ability of the sign to distinguish a product or service. It should be noted, however, that even a sign that was originally devoid of distinctiveness can be validly registered as a trade mark if, as a result of the use made of it before the application was filed, it has acquired distinctive character (so-called secondary meaning). Conversely, the so-called vulgarisation phenomenon may occur if a sign, originally distinctive, becomes a generic term of the product due to the owner's activity or inactivity.

• Lawfulness³Excluded from registration are signs contrary to law, public order and morality, signs likely to mislead the public (in particular as to the geographical origin, nature or quality of the goods or services) and those the use of which would constitute an infringement of another person's copyright, industrial property right or other exclusive right of a third party.

• News⁴This is a relative ground for refusal, related to the presence of third party rights. In this sense, a trade mark may not be registered (or if registered, may be cancelled) if it is identical or similar to a sign of another person used to distinguish goods or services identical or similar to those for which the trade mark registration has been applied for, where this is likely to cause a likelihood of confusion on the part of consumers, or a likelihood of association between the two signs.

In the case of trade marks having a reputation, protection may also be granted for non-similar goods where the earlier trade mark has a reputation in the European Union or in the State and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier sign.

 ² article 13 c.p.i.
 ³ article 14 c.p.i.
 ⁴ article 12 c.p.i.

 Purchase of the right

Any person may apply for the registration of a sign as a trade mark provided that he uses it or proposes to use it in the manufacture or marketing of goods or in the provision of services by his own undertaking or by undertakings over which he has control or which use it with his consent⁵.  

The trade mark may be transferred for all or part of the goods or services for which it is registered.

⁵ art. 19 c.p.i.

Duration, nullity and forfeiture

Registering a trade mark in Italy takes ten years from the date of filing and may be renewed indefinitely for periods of ten years.

The trade mark may be declared invalid (with retroactive effect), in whole or in part, for breach of the legal provisions relating to registrability requirements, or it may be revoked for lack of use or for vulgarisation or supervening illegality. 

Nullity and forfeiture may be partial on a part of the goods/services claimed. 

Non-registered trademark

In Italy, the right to an unregistered trade mark is also recognised, but this enjoys a more limited protection that is closely linked to the actual use of the sign. 

For such a sign to be capable of granting an exclusive right to the proprietor, it is in fact necessary to prove that the consumer knows the sign used on the market and associates it with a particular entrepreneur (qualified reputation). 

Brand types

In addition to traditional trade marks, there are two special types of trade marks: the collective marks⁶ and the certification marks⁷. 

Legal persons under public law and trade associations may obtain registration of collective marks which they may grant for use to manufacturers or traders. Contrary to what is normally the case for trade marks, a collective mark may consist of signs or indications that may serve in trade to designate the geographical origin of goods or services. 

Natural or legal persons, including institutions, authorities and bodies accredited under current certification legislation, to guarantee the origin, nature or quality of certain products or services, may obtain registration for special marks such as certification marksprovided they do not engage in an activity involving the supply of goods or services of the certified type. In Italy, a certification mark may consist of signs or indications that may serve in trade to designate the geographical origin of the goods or services, but this condition is not provided for by the EU Regulation⁸.

 ⁶ article 11 c.p.i.
 ⁷ art. 11 bis c.p.i.
 ⁸ Reg. (EU) 2017/1001 of 14 June 2017 on the European Union Trade Mark

Reasons to register a trade mark

Registering one's trade marks is therefore extremely important for several reasons. Registration guarantees the right to exclusivity and offers a presumption of validity of the right that goes back to the filing date of the application. A registered trade mark allows the owner to prohibit third parties from using a trade mark that is identical or similar to his own for identical or similar products when this is likely to create a likelihood of confusion on the part of the relevant public. 

Since the trade mark is an important intangible asset of the company, registration is useful to identify it clearly and precisely and offers a guarantee to customers and possible partners by facilitating distribution and licensing or assignment agreements.

Scope of protection

Trade mark protection is recognised for the goods and services for which protection is sought, defined according to the Nice International Classification. This classification provides for 34 classes of goods and 11 classes of services, and the number of classes claimed for filing determines the amount of fees to be paid to the Office. 

The exclusive rights to a trade mark are limited to the territory in which protection is sought. It is possible to apply for registration at individual national offices (in Italy by filing an application at theItalian Patent and Trademark Office (UIBM))  or make use of simplified procedures introduced to facilitate international trade mark protection. 

The Madrid System allows the filing of a single application for international registration of trade mark at WIPO (Organisation Mondiale de la Propriété Intellectuelle) in Geneva, designating, among Contracting States those of actual interest; the resulting protection will be the same as if the trade mark had been filed directly. The international procedure also makes it possible to extend trade mark protection to countries other than those originally designated, thanks to the possibility of subsequent designations.

It is also possible to protect the trade mark in European Unionapplying for protection at the EUIPO (EU Intellectual Property Office) of Alicantein which case the right shall take effect in the 27⁹ currently adhering territories with clear advantages in terms of both costs and management of the title.

By virtue of the principle of unitary character, the validity of the trade mark Trade Mark of the European Union must be assessed with reference to each part of the Community. Therefore, if the trade mark constitutes a generic designation only in one of the countries of the Community, or if it is deceptive only in one of those countries, this may affect the validity of the trade mark throughout the entire territory of the E.U.; similarly, the lack of novelty will be assessed with reference not only to earlier Community trade marks, but also with reference to national trade marks registered in a Member State, or in any case with effect in a Member State.

 ⁹ Following the UK's exit from the European Union as a result of Brexit.

 Registration procedure

Once a trade mark application has been filed, there are several steps before final registration is obtained. First, a formal examination is carried out by the competent Office, which also checks for absolute grounds for refusal of registration. In Italy, the UIBM does not carry out a check on earlier trade marks; such a search is instead conducted in some foreign countries.

If the Office finds that there are grounds for refusal, it will issue a provisional relief or refusal, to which the proprietor will be entitled to respond within the time limit. If no reliefs are raised by the Office or they are overcome, the trade mark is published in the Trade Marks Gazette. Upon publication, holders of earlier rights have a period of three months to file an opposition. 

If there are no particular critical issues, the registration process in Italy is normally concluded within 12 months after filing. Before the final granting, it is not possible to enter the ® symbol.

For this reason, it is advisable to be forward-looking and keep in mind some golden rules for proper protection: 

• Plan brand protection activities in advance by involving the various corporate functions in the design and promotion of their brands; 
• Before starting the promotion of a new trade mark, check that it does not infringe the rights of others;
• Consider registration timelines to arrive at product marketing with adequate brand guarantees; 
• Make an appropriate foreign registration policy: not too limited or overly broad;
• Monitor the activities of third parties and take prompt action to defend your own sign. 

Priority Searches

In order to verify that the trade mark is new, prior novelty investigations can be carried out, which must take into account the territorial scope in which the trade mark is to be used, of products and services of interest, the type of trade mark to be searched for and the degree of depth one wishes to obtain. 

In addition to fee-based databases, a number of free platforms are available¹⁰These are useful to check for identical trade marks and thus allow a particular name to be discarded or to keep the name unannounced and to carry out further investigations to check for similar trade marks. 

¹⁰ for example: TMVIEW o Wipo Global Brand Database 

Surveillance

In order to maintain exclusivity on the registered trade mark, it is advisable to activate a surveillance service on the sign so as to be promptly informed of any filings, made by third parties, of trade marks that are identical or in any case confusingly similar to the one being monitored. This is in order to file an opposition to the above-mentioned marks within the time limits provided for in the individual countries and avoid any subsequent and much more costly actions that would have to be taken if the later mark were to be registered.