Register the trademark to protect the brand

New brands emerge in every industry all the time. Projects, businesses, products, enterprises that launch themselves and decide to create an identity around us. But how is this identity protected?

Let's start first by saying what we can protect with registration. All signs - names, personal names, payoffs, phrases, letters, numbers, sounds, shape of the product or packaging, symbols, logos, combinations or chromatic tones - can be registered as a trademark as long as they distinguish the products or the services of one firm from those of other firms.

We speak of brand and non-brand (in English brand). While the brand is a sign, it can be touched, printed, applied to products, the brand is intangible : it is the perception one has of a brand, it is an abstract concept that refers to values, sensations, reputation and ideas. The brand is the intangible heritage that a company builds up over time and that it undertakes to communicate.

Why should we register the trademark?

The filing (and subsequent registration) of the trademark gives you the exclusive possibility of using a sign (a word or a logo) to distinguish the products and services you offer to your customers. In other words, the brand allows you to:

• be the only one to use a distinctive sign, distinguishing you from your competitors;
• protect your brand identity, conveying brand values;
• preserve your economic and creative efforts from unauthorized use ;
• equip yourself with an asset that may be subject to a transfer, license or other commercial agreement.

How does trademark registration work?

In principle, to obtain trademark protection, it is necessary to file a deposit with the competent authority (at Italian, European Union, international level or in the individual foreign countries of reference). The global brand does not exist, but you can obtain protection, through various filing strategies, in all the countries of your interest.

After filing, if the trademark does not present absolute impediments to registration, it is published in the reference bulletin and a three-month deadline opens within which third parties can file an opposition to your application. If this does not happen, the trademark enters the registration phase and the registration certificate is issued. However, it is important to know that trademark protection starts from the moment the application is filed.

The trademark protection has a duration of 10 years from the moment of filing and the trademark can be renewed for successive periods of 10 years without time limits.

During the life of the trademark, in order to preserve its validity, it must be used in the form in which it was filed and for the products and services for which protection has been requested.

Before filing the trademark, it is possible and recommended, but not mandatory, to carry out a prior art search. The search is used to identify brands that are identical or similar to the brand of interest in the selected area and in relation to the products and services it will distinguish. These searches are conducted on registers where the registered or trademarks are collected.

Research can be very complex and I would recommend the help of a professional who can not only identify the pertinent results, but also interpret them in the light of the relevant legislation and jurisprudence.

Following the registration of the trademark, however, always optionally, it is possible to activate a surveillance service that monitors the registers of interest so that you can be informed in the event that someone files an identical or similar trademark to yours in the selected territories . These services are also not mandatory, but are strongly recommended in some industries.

In which countries can I register the trademark? And in which product categories?

Coming to the practical point, first of all it is necessary to identify the protection territory of your interest as this decision allows you to broadly define the cost you will have to bear and to verify if your brand has the protection requirements with reference to the legislation of the State where you want to obtain protection.

Secondly, you need to identify the products and services of your interest . These products and services are cataloged and divided into 45 internationally recognized categories which are called the "Nice Classification".

This aspect will also be useful for defining the cost of the operation as the addition of a product class allows you to expand the protection of your brand and determines an increase in filing fees.

With reference to the product categories to be included in the application, I suggest you identify not only the products and services you are currently promoting, but also those you plan to promote in the short/medium term.

In fact, once the filing has been made, it is not possible to add further product classes or products and services to the same application, but - if possible - you will have to file a new trademark application.

Should a small business or a freelancer register their brand or is it an operation that only makes sense for big brands or those that aspire to be big?

I always recommend evaluating the trademark filing very carefully because the investment for an Italian trademark filing can be limited, especially if you think about the ten-year term of protection. In my opinion, then, there are some very significant indicators that play an important role in the decision.

I always recommend filing a trademark to anyone who:

1. they are fond of their name/logo, they want to be the only ones who can use it and they would feel offended if someone used a name/logo identical or similar to their own;

2. have made (or are planning to make) investments in their brand identity and online positioning;

3. They want to develop business partnerships .

Naturally, the deposit is also recommended for those who strongly believe in the success of their project.

If the name I chose is in use by another company, can I use it?

Sincerely, I advise against adopting names that are identical or similar to names already in use by others. I find it penalizing and – in some cases even illegal – to promote a brand that has similarities to that of another company. Consumers and users may receive ambiguous and unclear messages.

However, it should be noted that, under certain conditions, identical brands can coexist. This occurs, for example, when trademarks are filed for different products and services , which have no affinity and do not create any risk of confusion or association.

But can I also register the patronymic, my name and surname?

Yes, it is possible and indeed it is strongly recommended if you intend to use your name and surname as a trademark. In fact, people often think that the right to the name is in itself sufficient to guarantee the exclusivity of use as a trademark, but in reality this is not the case. It is even possible to register names other than your own as trademarks (as long as they are not famous names)!

Are there names that cannot be registered or that are more difficult to protect?

For example, the descriptive names of the products and services that they distinguish cannot be registered as trademarks. Even names that contain geographical references present various problems. Finally, even trademarks made up of individual letters of the alphabet, combinations of numbers or "trivial" graphic compositions can be difficult to protect.

What can we do to protect the identity of a brand in addition to registering the trademark?

First thing: create an identity that clearly distinguishes itself from that of its competitors. The more one's identity is cured, strong and perceivable from the outside, the easier it will be to obtain protection. Creativity is the basis of protection . The legal system offers various forms of protection that have the creative figure as their common denominator.