Trademark registration grants the holder its exclusive use and the right to prohibit third parties from using similar or identical signs which may create a risk of confusion with its trademark (art. 20 Italian Industrial Property Code).
For this reason, the first step of an entrepreneur is to plan their current and future business strategy, which also includes trademark design and creation, and its relative registration.
In order to ensure full coverage of the mark in the countries where a company decides to file a trademark application, it’s important to immediately define the appearance of their trademark (name, figures) and the products and/or services to be claimed.
The entrepreneur’s choice should focus on the countries covered by the business, where they will be sure to use it.
This is essential because, once the trademark is registered, the same trademark cannot be extended to other businesses; a new trademark must be registered.
Once the trademark has been created, before proceeding with the registration procedure, it’s best to:
- assess whether the mark meets the validity requirements (distinctive capacity, novelty, originality, legality);
- check whether there are “identical and/or similar” trademarks already filed and registered by third parties – for the same products/services and included in the same product classes – that could be in conflict with the trademark to be filed.
This is done through a preliminary search on special sites (UIBM, EUIPO, WIPO).
However, this search cannot be considered exhaustive; therefore, to obtain more reliable and secure information, it’s best to also carry out a prior art search.
What are commodity classes?
These are specific commercial categories ordered into 45 classes, belonging to the Nice Classification, with which the products and services that are intended to be claimed in the trademark registration can be classified.
Trademark registration procedure
Once the preliminary feasibility assessment for registering a trademark has been completed, the countries in which to extend the trademark validity must be chosen.
Costs vary according to the product classes claimed and the designated territorial area.
Entrepreneurs have three options here:
1) National trademark registration
For example in Italy, if a company only wishes to protect its trademark on Italian territory.
The application for registration can be filed electronically (in which a digital signature is mandatory) with the UIBM or in paper form at the Chamber of Commerce.
This application has the following costs:
- 101 euros for the registration fee, including one class;
- 34 euros for each additional class;
- 16 euros for the stamp duty for every four pages (paper mode);
- 42 euros for the stamp duty (electronic or fast-track electronic mode);
- 40 euros for any secretarial fees (per paper application).
2) EU trademark registration
This is for companies that want to protect their trademark in the countries of the European Union, including Italy (excluding the United Kingdom, which has left the EU).
The registration application can be filed in electronic or fast-track electronic mode with the EUIPO. We recommend using this mode instead of the paper mode, which lowers the registration costs and processing times.
This application has the following costs:
- 850 euros for the registration fee, which includes the first class;
- 50 euros for the second class;
- 150 euros for the third class and for each subsequent additional class.
Once the registration application has been filed, you must wait a period of about three months for the application to be registered, in the absence of objections from third parties.
3) International trademark registration
An international registration lets a company protect its trademark beyond national and European Union borders, applying national legislation and with the support of the corresponding local consultant.
It is applicable in the countries which have signed the Madrid Agreement, otherwise an application must be filed in each country of interest.
The registration application must be based on a national “basic trademark” (i.e., an Italian one) or on an EU trademark.
The international trademark registration costs depend on the number of countries in which the trademark is to be protected.