Milano, 16.10.2015

TRADEMARK

A trademark is a sign capable of distinguishing the goods or services produced or provided by one company from those of other companies.

What is a Trademark

Can be registered as a mark of any sign capable of being represented graphically: words, drawings, letters, sounds, numerals, shape of products, packaging, pictures, colors, logotypes

What is a Trademark

Worlds. May be personal names, geographical names, letters or numbers, the individual words of the common language, invented words, word combinations, abbreviations, misspellings and slogans

What is a Trademark

Logotype. Words are presented in an imaginative way or a drawing or a model, independently or in combination with words and colors (in this case are also called mixed trade marks).

What is a Trademark

Color marks. Colors alone or in combination with other colors, no boundaries and no definition of the form (define the color using a code)

Sound marks. All signs that could be perceived through acoustic instruments rather than visual - sound marks can be sounds, musical notes, with or without words

What is a Trademark

Three dimensional mark. Forms of products or packaging or otherwise reproduced in three dimensions

What is a Trademark

The shape of goods or of their packaging may constitute a valid mark, provided that the distinguishing mark does not consist exclusively of the shape which results from the nature of the product and therefore the shape necessary to obtain a technical result (protectable by patent or utility model) or the shape which from substantial value to the product.

What is a Trademark

Service marks. Plays same function of a trademarks about a services and can be as financial, banking, travel, advertising

What is a Service mark

Collective marks. Are generally owned by an association or cooperative whose members may use the collective mark to market their products.

The association generally establishes a set of criteria for using the collective mark (e.g., quality standards) and permits individual companies to use the mark if they comply with such standards. Collective marks may be an effective way of jointly marketing the products of a group of enterprises which may find it more difficult for their individual marks to be recognized by consumers

What is a Collective mark

Generic terms. For example, if your company intends to sell water, in the mark couldn’t be contained “water” because is the generic term of the products.

Descriptive terms. All the words that are usually used to describe the product. The word Classic it could be considered unfair to describe any single suite manufacturer exclusivity over the word “Classic” for marketing its products.

Contrary to public order. All Words and figures that could be violate commonly-accepted norms of morality, nation and religion.

What not use

Novelty. No trademark must already be registered

Duration. 10 years renewed indefinitely on payment of fees

The originality. A brand is much more original than most conceptually distant from products for which it is used.

Requirements

A brand must satisfy the so-called principle of "Foreignness the brand from the product “

It must be connected to the product but can not identify with it.

Requirements

Trademark protection can be obtained with a registration or, in some countries, also through use.

Even where trademarks can be protected through use, you are well advised to register the trademark, because registering a trademark will provide stronger protection, particularly in case of conflict with an identical or confusingly similar trademark.

Trademark Protection

A trade name is the full name of your business that identifies your company.

Trademark Protection

A trademark is the sign that distinguishes the product of your company, and company may have various trademarks.

Because a Companies can use a specific trademark to identify all products, a particular range of products or one specific type of product.

Trademark Protection

According to the strategy, a company could decided to use the same brand for all its products, extending it to every new product introduced to the market or, conversely, to use a new brand for each product line.

Trademark Protection

Allow the consumer to distinguish similar products from different companies enable companies to differentiate their products

Why a Trademark?

Is a crucial component of franchising agreements, can be licensed and therefore constitute a source of additional income (royalties)

Is marketing tool, and the base on which to build the image and reputation

Why a Trademark?

Can be a valuable business asset and facilitate the obtaining of funding

Encourage companies to invest in maintaining or improving product quality

Can be licensed and therefore constitute a source of additional income

Why a Trademark?

If a competitor adopts a similar or identical trademark, customers could be misled into buying the competitor’s product thinking it is your company’s product.

Why a Trademark?

Because without trademark registration, your investments in marketing a product may become wasteful as rival companies may use the same or a confusingly similar trademark for identical or similar products.

This could not only decrease your company’s profits and confuse your customers, but may also damage the reputation and image of your company, particularly if the rival product is of inferior quality.

Why a Trademark?

Before filing an application, you can search in databases to find out if there are identical or similar marks already.

Filing an international application requires that you have already registered or applied for a mark in your "home" IP Office. 

Find out more about the process, including forms, fees, designating Contracting Parties and determining a list of goods and services.

Once your mark is registered, you can easily manage your rights through a single request. 

Find out how to renew an international registration, extend the geographical scope of protection.

Manage a Trademark

While filling your trademark application you have to indicate the goods and/or services for which you wish to register your trademark and to group them according to classes.

Trademarks are grouped into “classes” according to the goods or services they serve to identify

These refer to the classes in the trademark classification system.

The most widely used classification system is the International Trademark Classification system - Nice classification, which has 34 classes for goods and a further 11 for services.

Manage a Trademark

A trademark search is important before submitting an application.

This is done to make sure that the trademark you intend to use, or a similar one, is not already registered by another company for identical or

similar products.

You can do the search through your national trademark office or a commercially operated trademark database.

Trademark Search

The Applicant

1 - Send or hand in a duly completed trademark application form, which will include:• the information about your company • a graphic illustration of its mark• a description of the goods and services• the class for which your business wishes to obtain trademark

registration• and pay the required fees

Some trademark offices (e.g. US and Canada) may also require proof of use or a declaration that your company intends to use the trademark.

Registering a Trademark

The Trademark Office

2 – Formal examination. Examines the application to make sure that it complies with the administrative requirements or formalities

3 – Substantive examination. Examines the application to verify whether it complies with all the substantive requirements: e.g. whether it belongs to a category which is excluded from registration by the trademark law and whether the trademark is in conflict with an existing mark on the register in the class.

Registering a Trademark

4 – Publication and opposition in many countries, the trademark is published in a journal with a set period of time for third parties to oppose its registration. In other countries the trademark is only published once it has been registered, with a subsequent period for petitions to cancel the registration.

5 – Registration. Once it has been decided that there are no grounds for refusal, the trademark is registered, and a registration certificate is issued.

6 – Renewal. The mark may be renewed indefinitely by paying the required renewal fees, but the registration may be canceled entirely for certain goods or services if the trademark has not been used for a certain period of time specified in the relevant trademark law.

Registering a Trademark

Creation of a logo or word to be used as a trademark

For conducting a trademark search

Associated with the registration process, which vary depending

on the number of countries and the categories of products

For the Registration in your country.

Cost to use a professional trademark agent to assist in the registration

process

Registering a Trademark - Cost

You may apply for registration before you have used the trademark but some countries will not officially register it until you have shown proof of use (e.g., the United States).

Also, in most cases, a trademark that has not been used for a given period of time - three to five years following registration may be taken off

the trademark register.

This mean you could lose your rights in your trademark.

Using a Trademark

Trademark Overview

WIPO – Report 2013

Trademark Overview

WIPO – Report 2013

Trademark Overview

WIPO – Report 2013