The online anti-counterfeiting service provides valuable support for obtaining information on the protection of patents and not only that.
In order to be able to properly benefit from, and therefore be able to invoke, the various types of protection granted to holders of trademarks, models and patents, it is necessary, pre-emptively, to arrange for them to be filed for registration, an essential requirement in order to immediately protect them against third parties whose behaviours or actions may be detrimental to a valid patent-right.
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1. I am interested in filing a trademark, but I have not high economic resources. How much does it cost to file a trademark?
The filing of a trademark in Italy has low costs, which vary depending on the number of selected categories of goods. It remains in the order of a few hundred Euros, unless the need to apply for more complex and structured trademarks, in which case it may be useful to turn to specialized consulting firms (agents). Even in these cases, however, the cost of a national application considering the gross fees of agents, can be evaluated as modest. In order to file the trademark in several countries, the European trademark constitutes a valid response and is very profitable, considering that the registration is valid in all current EU member states and involves a much lower cost than the sum of individual national applications which should be effectuated in those countries. If the interest of the trademark holder is to extend its protection to non-EU countries it is possible to submit an application for international registration in the countries that have joined the Madrid Agreement / Protocol. The cost of this type of application is composed of a basic fee plus a fee for each of the states listed in the registration application and increases according to the number of countries in which you want to register the trademark. The filing of the trademark typically lasts 10 years and is renewable, thus accounting for the owner a lasting investment.
2. The filing of the trademark guarantees me the exclusive right to the use it in the whole world?
The filing of a trademark has a territorial value, limited to the area/country in which you are filing it. However, there are supranational protection systems for the countries of European Union (EUTM) and for those members of the Agreement / Madrid Protocol (International Registration), very convenient both from a cost point of view and in terms of the subsequent territorial extension of the protection.
3. If I file a trademark will I have the exclusive right to use it in the market for all types of products and services?
The filing of the trademark registration is obtained only for the products and services indicated in the application that in most of the countries are divided according to a special commodity classification. With the registration it is acquired the exclusive right to use the trademark for those products and services. Except in special cases involving well-known trademarks, it is not possible to prevent the use of the trademark for different or not similar products and services.
4. Is there a protection for the trademark that I have for a long time used, but that I have never registered?
In Italy and in some foreign countries it is provided -in particular conditions- the protection of trademarks that have been used but not registered, the so-called de facto trademarks. However, it is certainly more difficult to defend the exclusivity of this kind of trademarks, the protection of which is considerably more limited than the one of a registered trademark: it is in fact confined to the area where the trademark has actually been used, provided that the area is not only local, and bearing in mind that with the mere interruption of the trademark’s use, all rights are lost. On the contrary, for a registered trademark its use is mandatory only within five years from registration. The registration of the trademark is therefore the most advisable strategy in order to maintain the right to exclusive use it, and it is undoubtedly possible to request and obtain it also for trademarks that are already in use to strengthen a protection that otherwise would be precarious.
5. How can I choose my trademark?
The choice of a trademark to distinguish a product or service must be performed very carefully, taking into account some basic rules. In particular, the trademark must be new, that is, not identical or similar to other trademarks already registered for identical or similar goods or services; ignoring this rule may increase the risk of being sued by the holder of an earlier trademark, with the consequence of having to change the trademark with which, in the meantime,a new product or service has already been launched. To avoid this risk, it is advisable to do a prior art trademark search. The trademark must also be not descriptive of the product or the service, for example, a generic term used commonly in relation to the product itself, or composed solely of a laudatory term, must not be misleading about the quality of the product or service, must be able to identify the product or service and distinguish it from those of competitors and must be usable even in all countries in which it is planned to export the product or provide the service.
6. What are exactly the prior art searches and who carries out them?
The novelty of a trademark is an essential requirement for its adoption, including the registration. The trademark must not be either identical or too similar to an already used trademark and / or registered by third parties for the same category of goods or services. It can be ascertained the novelty of its trademark with the assistance of an intellectual property consultant, conducting a prior art trademark search of the IP rights already registered in Italy and in the countries where the application for registration will be filed. The cost of these searches will vary according to the parameters and the extent of the investigation, given that the investment is justified by the reasonable certainty that it will not be invalid due to a lack of novelty and will be not subject to attacks byprevious trademarks’ owners.
7. Can I register for my product the famous trademark of a third party that is registered only in relation to the different product known (eg. Coca Cola)?
The Italian law protects at certain conditions the exclusive use of trademarks with a reputation even for different products or services than those for which the trademark is registered (the so called ultra-merchandise protection). Attempting to use or register a well-known trademark even for goods or services for which that trademark is not used may be therefore against the law and may be exposed to cease and desist letters and legal action taken by the owner of the well-known trademark.
8. Is it necessary to indicate on the product or on the packaging that the trademark is registered?
In Italy there are no provisions which require the use of specific guidelines to distinguish trademarks filed or registered. In addition, the use of these symbols does not add anything to the protection conferred by the registration of the trademark. The function of the symbol ® is simply the one to remind the public of consumers and competitors that the mark is registered. This may be necessary especially for the trademarks for which it is feared the vulgarization, the phenomenon of which were victims of some brands used for innovative and successful products. However, attention is required since the law does not provide the obligation to add any specific symbol next to the registered trademark but it expressly forbids it if the trademark has not been registered. Therefore, only when the trademark is actually registered, the ® symbol can be used, and it is important to note that, although the effects of registration shall commence from the date of filing, a filed trademark is not a registered trademark.
9. How can I prevent others to file a trademark registration that is identical or similar to mine?
It is convenient to activate, after filing a trademark, a surveillance that rapidly informs the owner about eventual confusingly applications in relation to the “supervised” trademark. Some surveillance services are able to intercept the applications even before its publication.
Within a few months, set by the competent office, it is possible to file an opposition to the application before the opposing trademark obtains the registration. In this way, the registration process is blocked and the competent office decides whether the later trademark interferes or not: either party may argue, usually in writing, in his favour. The office then issues a decision. The procedure has the advantage of being on the whole less expensive and faster than a civil lawsuit against a trademark.
10. And if a competitor uses a mark identical or very similar to mine, without filing it?
Then it is necessary to activate an investigation service to collect evidence of counterfeiting in the protected area and take an action before the competent court, by means of a law firm (preferably an specialized IP law firm) in order obtain the closure of the counterfeiting and ask, where appropriate, a claim for damages.
11. I have developed an innovative technology that I intend to use as part of my business, how can I protect myself?
The answer may be the filing of a patent application in order to obtain an exclusive right to exploit the invention. The patents can be of different types. A patent for invention protects technical and technological aspects of a product or a process that possess the characteristics of novelty, non-obviousness, applicability and reproducibility in the industry. This patent lasts 20 years. The utility model patent protects the conformation of a product capable of conferring to unknown object a particularly effectiveness or easiness of application or use, as long as it is a new solution in the light of the relevant state of the prior art. The protection conferred by the utility model has a term of 10 years.
12. How to proceed with the filing of a patent application?
It must be filed a specific application with the competent patent office, which varies according to the territorial area of protection: it can be requested, in fact, an Italian, European, international or Community patent. In Italy, the application for registration shall be filed with the Italian Patent and Trademark Office (UIBM). The title is granted following a preliminary examination and publication of the application in order to allow third parties who claim to boast earlier rights to object to the grant.
13. I have the patent start-up based on a research and development activities in a certain field of technology and I haven’t high economic resources, how does it costs to apply for a patent?
The costs to apply for the protection of an invention that possess all the patentability requirements may vary depending on the area of protection and the type of invention that you want to protect: in any case, it is very often a much lower budget compared to the costs related to research and development, production and commercialization of the invention. When it comes to patents it can be useful to rely on a team of consultants in order to take better advantage of the different tools for the protection of IP rights within the different national jurisdictions. Before applying for the protection of a patent, it is important to check whether the new solutions do interfere with prior rights of other companies. At the same time, it is very important to apply for patent protection prior to the disclosure of the invention, to avoid discovering later that the results of the research and the innovation efforts have irretrievably been "given" to competitors.
14. I am a company that relies on the aesthetic aspect of my products so that they attract the consumer more than the others and are recognizable, how can I protect my solutions?
The model or registered design would be the solution. It is an industrial property right that relates to the appearance of the whole product or of one of its components, which possesses novelty, meaning that it has not been previously disclosed, and originality, in the sense of differing in the opinion of an informed user, from any design or model disclosed before the date pf which the application for registration was filed. It’s flexible tool, which can have a minimum duration of five years, renewable up to a maximum of 25 years. It has low costs and, through the Community design, it is possible to file up to 100 models (for example, products used to make up or a line), obtaining protection in all European Union countries.
15. I produce, and sell design products, but have never protected its forms with a registered model or design. Is there a protection for unregistered designs?
The protection granted to unregistered design or model is limited to three years from the date of the first disclosure in the European Union, of which necessarily it must be provided the adequate evidence. This design, which is not backed by a presumption of validity as in the case of registration, may be asserted upon against those who have consciously copied, in an identical manner and therefore not only in the form of confusingly similar inspiration, the object of the design. However, it must be pointed out that any forgetfulness can be rectified by filing a subsequent deposit of models that have already disclosed within one year after the first disclosure (the so called “year of grace”).
16. The setting and the titles of my company brochure have been copied. There are also photographs taken from my company website. What can I do?
The brochure, the content of the website, and the photos, wherever they have been copied are subject to copyright and can be defended, of course, provided they are original and not copied in their turn.
17. Is it necessary to register the copyright?
The copyright exists from the moment the work it’s created by its author (eg. a drawing, a photo, a brochure, a software). Therefore, the registration is not mandatory. However, if a lawsuit for infringement copyright is brought, and the work is not registered, is due to the plaintiff to supply evidence in order to prove that the work was created before the alleged copying version. If there is a recording (usually at the SIAE, in the face of very low cost), the problem is solved because the creation date appears in the registration certificate.