The first question that arises when starting a business is: how to register a trademark?
Whether we realize it or not, it is often the brand that attracts consumers much more than the product itself, in which they trust before even knowing the new product.
FIRST OF ALL WHAT IS A BRAND?
It is the sign that identifies a product or service, identifying its origin. And it is a real business strategy adopted by companies and start-ups .
Useful for spreading and increasing one’s fame, retaining customers and creating new ones.
It is therefore evident that trademark registration has a truly significant strategic importance for anyone starting a business.
REGISTERING A TRADEMARK: SOME INDICATIONS
However, it is good to keep in mind that registration does not give the holder an absolute monopoly for the chosen sign.
But rather the right to prohibit third parties from using trademarks identical, or similar if there is a likelihood of confusion, to the one registered.
The use of the trademark for different products is also prohibited when the user of the trademark takes unfair advantage of the reputation of the previous trademark.
When discussing how to register a trademark, a clarification should be dedicated to the so-called “de facto” trademark.
In this way we refer to a trademark, not registered, but widely used in the territory.
This, if endowed with a certain reputation, is not devoid of any protection and is defensible in court. But on condition that its notoriety and effective use are demonstrated.
For a complete knowledge of the regulations relating to the field of patents and trademarks, it is possible to refer to the Industrial Property Code (CPI). Let’s first see which trademarks can be registered and their validity requirements.
WHICH TRADEMARKS CAN BE REGISTERED?
The CPI establishes recordable all the signs, or their combinations, which can be represented graphically. These include words, regulated by art. 8, for the word mark.
And also real or fantasy designs for the figurative mark; the shape of the product or its packaging, governed by art. 9, for the shape or three-dimensional mark.
Recently introduced in the national discipline are the sound, movement, multimedia and holographic brands. Provided they distinguish the products of one company from those of other companies.
TO KNOW HOW TO REGISTER A TRADEMARK IT IS NECESSARY TO KNOW SOME FUNDAMENTAL REQUIREMENTS
To approach this world, it is also good to know the validity requirements of the trademark. That is novelty, lawfulness and distinctive capacity.
To be considered new, there must be no identical or similar trademarks already registered for the same goods or services that the trademark intends to cover.
A prior art search is therefore an optional step, but strongly recommended. This will allow you to verify the existence of a registered trademark equal to your own.
AN ESSENTIAL REQUIREMENT
Continuing, an essential requirement for a trademark to be considered lawful is compliance with public order and the provisions of laws, with which it cannot enter into conflict.
The ability of a brand to immediately identify the products or services of one company with respect to those of another constitutes its distinctive capacity.
Finally, the brand cannot be misleading. That is, it cannot contain words that lead one to think that the product has qualities that it does not actually possess.
REGISTERING A TRADEMARK: THE COST
But let’s now turn to the fundamental question of whether you are considering registering a trademark, which is the cost of protecting it.
Registration fees mainly depend on business objectives, as they vary according to the country in which you want to market the product.
But also from the breadth of the product sectors to be covered. To register a single trademark exclusively in Italy , for example, the cost for registration will be the lowest compared to that to operate in Europe or in non-EU countries, or to register several trademarks.
ASK A PROFESSIONAL
Clearly, the fee due to the professional who takes care of the registration procedure is added to these expenses.
And who has a lot of experience on how to register a trademark. Let’s examine both these categories step by step, distinguishing the types of existing brands and the consultant’s prerogatives.
THE BRAND: OTHER DETAILS
As anticipated, a trademark is protected only in the state in which it is registered. That is, depending on the geographical area on which you intend to operate, therefore the costs vary.
To market the product only in Italy it is sufficient to register the Italian trademark with very low taxes.
While to sell also in Europe it is better to opt for a European brand. In this case the taxes are higher but it is possible to protect the Brand in all the Member States of the European Union.
The International Trademark, on the other hand, is the best solution. As long as the goal is to expand the brand outside the EU.
However, it is necessary to consider the dependence of taxes on non-EU territories in which the business is to be extended and in which the application must be filed individually.
THE PRODUCT CLASSES AFFECT
These expenses refer to a single product class. In fact, if the intent is to cover several product categories with a brand, the amount of taxes could increase depending on the country.
While in some states, including the United Arab Emirates and Macau, the filing of the trademark in multiple classes is not allowed. The cost for registration, in these cases, must be multiplied by the number of product classes that you intend to cover with a brand.
If you have already registered a trademark and intend to add others at a later time, unfortunately it is necessary to bear the costs of a new and separate registration application.
THERE IS NO SINGLE PROCEDURE
If at this point you are wondering if there is a single procedure to be able to register in all countries and in all product classes, then you will be disappointed. In fact, unfortunately, there is no single registration worldwide.
This is obvious considering the rules, procedures and taxation that characterize individual countries. And which are subject to frequent changes.
SOME COUNTRIES REQUIRE EXTRA COSTS
In some states, in addition to taxes, there are extra expenses to be incurred.
As in the USA, for example, where the owner of a registered trademark must prove that he has used it in that territory within a certain period of time, under penalty of cancellation of the trademark. Of course this requires the preparation of documents.
And, in addition, proof of use of the trademark in the area, with the related fees due to the local office and the consultant. In addition, in the case of foreign national brands, for example, the withdrawal of the original certificate has costs to be incurred which depend on the territories in which one operates.
REGISTERING A TRADEMARK: POSSIBLE IMPEDIMENTS
Finally, there may be impediments in registering a trademark or in granting it.
Or it may be necessary to provide further specifications to what is indicated in the filing application.
These are the categories for which the intervention of a consultant may become necessary. And so the costs increase, depending on the country and the actual work to be done.
HOW LONG DO THE RIGHTS LAST
To conclude, it should be noted that the rights conferred by the law on the trademark owner do not have an unlimited duration.
But, starting from the filing date of the application for registration, they last 10 years. And upon expiry it is possible to renew the trademark for a further 10 years by submitting a new application.
The art. 24 of the CPI also establishes the penalty of forfeiture.
That is, the risk of losing ownership of the trademark if it is not used in the five consecutive years after registration.
This is especially the case if someone else registers that same trademark in turn.
IT IS BETTER TO USE EXPERTS WHO KNOW HOW TO REGISTER A TRADEMARK
While filing and registering a trademark is not overly difficult, it is still a very delicate process.
Therefore it is always good to make use of professionals authorized to legitimately represent you and advise you, including lawyers and trademark consultants registered in the appropriate register.