Trademarks

What is a Trademark and What it means to a company

Every company or successful product is remembered for its trademark.

A trademark is not just the name of a product, a service, a company, it is the essence of the company which holds its values and contents. It is not a coincidence that a trademark is the most valuable asset in the transfer and merger of companies.

The filing of a trademark is cheap and offers many advantages in terms of image and identifiability on the market.The main function of the trademark is to show the “origin”. Thanks to the trademark one can recognize the origin of a product or service of a certain undertaking. The trademark is also the means to spread and increase the fame of an undertaking and the trust of its clients.

A Trademark is Forever

A trademark gives to its holder the exclusive right of using the chosen sign for ten years in the country or countries where it has been registered.
At the expiration of the ten years, it can be renewed for ten additional years and so on.

A trademark decays if not used for a variable period, generally of 3 or 5 years, starting from the registration date. The cancellation is not automatic, it has to be stated by a judge or by the Office after a specific request submitted by someone interested in canceling the trademark.

IT TAKES A FEW STEPS TO GUARANTEE A FUTURE FOR YOUR WORK WITH TURINI

Filing a Trademark with the Help of an Expert

Words, signs, symbols, sounds, perfumes and many others can be registered as trademarks.

The name of an undertaking and also the name of a product or a service can be registered as a trademark.

Undertakings always have many trademarks to identify different product lines.

The procedure to file a trademark is not so complex, the difficulty lies in the skill of the consultant in making the right strategic choices to identify the most suitable classes of product and in leading the entrepreneur in setting a method to valorize the business names.

To register a trademark means to have the exclusive right to use the chosen name, symbol, sign so that that trademark recalls immediately and unmistakably only and exclusively the one who registered it.

Since the trademark is territorial, the protection granted by the registration has effect only in the countries where it has been registered. Differently from the other rights of industrial property, trademarks have an unlimited duration in terms of time, on the condition that they are used and renewed every 10 years.

Even this peculiarity makes the trademark an asset of absolute value.

How to Register a Trademark

In order to obtain a trademark, it is necessary to prepare a specific application including the sign and the list of goods and services for which the trademark will be used. The trademark will obtain protection only for the identified goods and services therefore it is very important to be helped by a Trademark Agent able to lead and advise the client as best as possible.

Our Certification for Your Safety

In our law firm, trademarks are managed and filed by Trademark Agents enrolled in the Italian Industrial Property Consultants Institute  and by European Trademark Agents enrolled in the European Union Intellectual Property Office (EUIPO). We represent our clients before the Italian Patent and Trademark Office (UIBM), the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO) where we file their (Italian, European and International) trademark application in every country of the world.

We would like to remind you that it is possible to become an Italian or European trademark agent only after a strict qualifying examination guaranteeing the ability of the professional. 

As an additional guarantee, our service has obtained the ISO 9001 and ISO 27001 Certifications. All professionals and collaborators of our company work by applying strict procedures in respect of data safety to reach the highest quality standards while performing the service.

A Consolidated Experience: The Studio Turini Method

For 30 years we have been working to offer our clients the best protection for their business trademarks.

Our job includes the examination of the business strategies of our client, the identification of the main goods and services, of the countries where they work and those where they will operate. All this in addition to the study of the target audience and of the competitors’ work which are important elements to consider in choosing the best form of protection.

Our method is based on six principles.

  • The client is personally assisted by a professional to whom they can always refer to for any need. The client has a contact person that knows all the history of their trademark and organizes the possible intervention of other professionals;
  • A deep examination of the commercial needs of the client and the setting of the best strategy of trademark protection on the basis of the current business and of the projected developments;
  • Study of the trademark, suggestion of novelty search to verify its strength and choice of the graphic to file in agreement with the client;
  • Identification of the countries where the trademark should be filed and choice of the countries where to protect it, of the classes of goods and services and of the timing to put into action the protection plan agreed with the client;
  • Written report to the client summarizing the strategy adopted together and waiting for the client’s final approval. Filing of the trademark in the chosen countries for the agreed goods and services;
  •  Insertion of the filed trademark in a specific and exclusive management software enabling the client to be constantly updated on trademarks’ deadlines, registration and status.

Strategy and Overall View: the Strength of The Studio Turini Method

Our starting point is the synergic action and the customer focus.

First of all, we analyze the organization of the client and we listen to their needs.

This is a very important step that we follow with extreme care by asking the client specific questions and making comparative examinations with the main competitors to understand with the client the goal that we intend to reach.

The examination of the registered trademark and of the portfolio domain (already active or to be widened with additional registration) is of paramount importance. In order to have strong foundations from where to continue with the protection of the business identity and of the trademark online through the use of suitable tools for protection and prevention. 

Once the goal has been fixed, it is possible to plan an intervention which could be innovative (realization of new services, registration of new trademark and domain) and/or conservative.

After this planification, we proceed following what was agreed with the client.

The planification is personalized for each client in accordance with their needs.

It is generally made up of three steps:

a)  Study of the trademarks and potential strengthening

The starting point of the brand protection is the study of the client’s trademarks.

The status of the registration, the correctness of the claimed classes, the countries where the registrations are in force are all examined in order to decide possible reinforcement actions which may consist in new registrations and/or in the rationalization of the existing trademarks even, at times,       choosing to not renew certain signs and replace them with new ones.

This step is important also with regards to the examination of the use of the signs, necessary to avoid their loss.Our professionalscan manage the whole trademark portfolio, taking care of their existence, their renewal, the oppositions and all the prosecution – supplying periodic and updated reports on the status of the trademark to the client.

b)  Activation of the trademark surveillance service

It is possible to activate surveillance services on selected trademarks according to the circumstances in order to be aware well in advance of potential other party attempts to register similar trademarks.

c)  Activation of surveillance service online

It is possible to activate surveillance service online, on social media and on apps.

We use tools aimed at tracing earlier trademark and domain registrations, and also the missing ones, in order to have a complete view of the status of the brand online.

d) Exam of the status of domain registration – Domain Audit

The Domain Audit service analyzes domain name registrations, made and missing, for a specific brand. It considers all the extensions (geographical, generic and new) available on the market.

It starts from the analysis of the registration and expiration day of the domain name and it collects information on its current holder and supplier (if present, on the Whois database).

e)  New domain names registration – Domain Name Management

We assist you in the management of every step of the registration of domain names, from the collection and entering of data to the sending of the documentation that may be required to support the positive ending of the registration. The service is completely handled by a dedicated account manager who handles all of the bureaucracy for the client. To entrust the complete management of the domain name to a qualified operator, allows the client to prevent future issues due to the lack of the registration of an extension, as well as to anticipate the criticalities due to the possible difficulty in recovering a domain name registered by another party.

f) Recovery of a domain name registered by thirds

Lastly, we recover domain names entitled to others.

The recovery service of domain names registered by others is performed in different ways depending on the circumstances.

Different types of trademarks to chose

Since the trademark is territorial, it has to be filed in the countries where the client intends to expand their business.

Anyway, there are agreements allowing one to file a trademark for groups of countries. The European trademark is an example.

The Italian Trademark

The Italian Trademark allows the exclusive use of a name or a sign identifying an undertaking, a product or a service in the Italian territory. This right prevents the importation of products bearing the same trademark in Italy and in general the use of the same or similar trademarks for products or services sold in the Italian territory even if coming from abroad.

The European Trademark

The European Trademark allows the exclusive use of a name or a sign identifying an undertaking, a product or a service in the European territory. As a consequence, if a country joins the Union, the protection of the European trademark is stretched to the entry country. Similarly, if a member leaves the Union, the protection of the European trademark stops for that country, as happened after Brexit.

The International Trademark

The international trademark allows one to file a single trademark application having effect in all the member countries of the Madrid Protocol. In this case, even though the trademark is filed with a single application, it behaves as a set of national trademarks. Since each country has different rules, especially for what concerns the classification of goods and services, even if the solution of an international trademark could seem cheaper, it is not always suggested because, in reality, it may complicate the achievement of the protection. It is very important to cautiously examine the specific case before choosing the type of filing.

The filing of a foreign trademark may represent an alternative to the European or international trademark if the entrepreneur is interested only in a specific territory, after having evaluated the costs/benefits of such a choice.

Trademark Novelty Search

Trademark novelty searches have the aim to verify the existence of earlier trademarks similar to or identical with the trademark to be registered for the same classes of goods and services or for similar classes. Therefore, they are extremely important before a filing.

These searches are rather complex and are performed by specialized operators using specific databases and software in order to maximize the result, guaranteed to 90%.

Trademark searches are conducted only for the countries where the trademark will be registered since the existence of an earlier trademark in that country can hinder the registration.

However, searches can be made also in other countries if it is in the client’s interest for other purposes.

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    We are equipped with a specialized software for the management of patents, design, trademark, copyright's portfolios" Battista Software Project" - Studio Brevetti Turini s.r.l. Project co-financed under Tuscany POR FESR 2014-2020

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