come si registra un marchio

Some preliminary checks

A few general rules must be observed before filing a application to register a company trademark:

  • ensure the trademark meets the legal prescriptions
  • verify that the trademark does not have any negative connotations, not only in Italy but in other countries, particularly if potential export markets
  • check that the corresponding domain name (or internet address) is still free
  • guarantee that the trademark is easy to read, write, memorise and advertise on all media types
  • perform a clearance search: to check it is not identical or similar to previously registered trademarks; the research can be performed on specific databases, available on the World Intellectual Property Organisation internet site. No research, for various reasons, can assure that an equal or similar trademark to that submitted for the protection of equal or similar products/services, exists. The research is an initial filter and can constitute a useful orientation tool in choosing the distinctive sign
  • identify the relevant classes of the products/services for which registration of the trademark is to be obtained, using the International classification system of trademarks (or Nizza system for the classification of trademarks), which includes 34 classes for products and another 11 for services. Just submit one application for more classes. The system is also available on the  WIPO internet site. It is essential that the trademark be registered in all classes in which it is to be used.

Filing the application

The registration application for company trademark must be made on form and filed at any Camera di Commercio (Chamber of Commerce). Alternatively, the application can be sent by mail to Italian Patent and Trademark Office: Ufficio Italiano Brevetti e Marchi – Divisione VIII - Via Molise 19 – 00187  Rome, by registered mail with acknowledgement receipt (but this is not recommended as the IPTO is obliged to transmit the application to the Camera di Commercio (Chamber of Commerce) for number and date of filling attribution with evident time loss for the effective protection) or electronically ( www.servizionline.uibm.gov.it

The application must contain:

  • Form: n 1 original and 2 copies (affix the € 16.00 revenue stamp on the original)
  • Certification of payment to Agenzia delle Entrate on F24  for the taxes; payment must be made before filing of the application
  • Receipt of payment on postal c/a for administration fees to the Camera di Commercio (Chamber of Commerce) where the filing is made
  • Letter of appointment, power of attorney or declaration of reference to general power of attorney (if any)
  • Priority document (if any)
  • Delegation deed (if any).

In the case of application for registration of a collective trademark, a copy of the regulation concerning the use of such trademark must also be attached. This must contain precise indications with regard to the checks and relative sanctions: as the collective trademark is a trademark granted "notwithstanding" the regulation on individual trademarks, failure to comply with the regulatory standards, if not sanctioned, would invalidate the assumptions for granting the trademark as collective.

 

 

Examination of the application

The registration process of national trademarks is divided into several phases:

Admissibility: the Office checks that the application complies with the conditions of art. 148 of IPC (applicant identifiable, reproduction of trademark, list of products and/or services).

Formal examination: the Office checks that the application contains the provisions of art. 156 of IPC (content of the application).

Technical examination: the Office, acknowledged the formal regularity of the application for registration, proceeds with the technical examination according to art. 170 of IPC, to ascertain there are no absolute impediments to the registration.

Publication: once examined by the IPTO, the application for registration is immediately made available to the public and reported in the Patents Bulletin for inventions, models and trademarks; this bulletin is published by IPTO on a monthly basis at least.

Comments: art. 175 of IPC provides that any person concerned can send the IPTO, without assuming the status of party in the registration process, written comments, specifying the reasons for which a trademark should be excluded from the registration, within two months from publishing the application. Should the IPTO consider the comments relevant, it will notify this to the applicant who can submit comments within thirty days from the communication. Comments received after that, from the examination of the application, or when the trademark has been considered registrable and made available for publication or already published on the registrable trademarks bulletin, cannot be taken into consideration; however, it will be possible to intervene with the objection procedure methods.

Administrative objection: art. 176 of IPC provides the option for the owners of a prior right, to  oppose the registration of the trademark application within three months from its publication.

Registration: having verified that there are no impediments, that no objection has been filed or, if so, that it has been positively resolved, the trademark is registered and the Office issues a certificate of registration.

Attention - Usually it takes over 4 months between the moment the application is filed and the registration certificate of the trademark is issued. It is compulsory for 3 months to pass following control of admissibility, to allow any administrative objection to the trademark registration to be filed by owners with a prior right.

The request for withdrawal of the application

IIf it is no longer interested in the registration of the trademark, in the period between submission of the application for registration and issuance of certificate you can present the request for withdrawal of the application by: a) the portal of online services www.servizionline.uibm.gov.it following the instructions; b) by the relevant Chamber of Commerce; c) by notifying DGLC-UIBM using the form stamped with a brand from € 16.00. The application shall include the particulars mentioned personal data of the applicant (or of authorized representative), the number and the filing date of the application for the mark that you want to withdraw, and must be signed by the applicant or, for assignment by the agent. It must also attach proof of payment of fee of € 34.00 only use F24 like "identifying elements or public bodies ", where appropriate:

  • an additional 16.00 Euro revenue stamp if a certified copy of the minutes of filing is requested
  • the letter of appointment with 16.00 Euro revenue stamp for the appointment of the representative (if already filed and also usable for withdrawal, simply attach a copy).

Once the application for withdrawal is filed, the user is issued with a copy of the report. As of the date on such minutes, the original filing application of the trademark is considered withdrawn.

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