Trademarks are distinctive signs which guarantee the origin of a product and/or service (in which case they are also known as service marks), ensuring the general public knows which specific business a product or service comes from.
A trademark brings exclusive rights to those who register it and prevents third parties using other signs which are confusingly similar to advertise or sell identical or similar goods. A trademark allows consumers to identify the origin of a product while also guaranteeing that this is where the product comes from.
There are various kinds of marks, including individual and collective trademarks and certification marks. Individual trademarks are used to distinguish a specific product and/or service within a market, giving its owner exclusive right of use of the mark; collective trademarks and certification marks, meanwhile certify the origin or certain qualities of a category of goods and/or services, and are granted to entities in charge of guaranteeing these aspects, such as consortia, for example.
These marks can consist not only of alphanumeric combinations (i.e. words, letters and numbers), images, or drawings, but also of sounds, the shape or form of the product or of its packaging, as well as combinations or colour shades and tones.
The territory within which the mark is granted protection may be extended at any time. The protection can therefore be national, i.e. limited to Italy or to another country, or it can be broadened to cover various countries by registration for an international trademark with the WIPO in Geneva or a for European Union trademark with the EUIPO in Alicante.
Trademark registration has a duration of ten years, after which the registration can be renewed for further ten-year periods.
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TRADEMARKS
PATENTS
A patent is available to anyone who has created a new technical solution and guarantees them exclusive rights and a legally protected monopoly of economic exploitation of their invention. This protection can be extended annually for a maximum of twenty years, at the end of which the invention inevitably falls into the public domain, thereby contributing to technological progress.
It is absolutely necessary not to disclose information concerning the patent, or market the product disclosed therein, before filing, as this could lead to invalidity of the patent.
A patent may relate to an invention or an innovation but, strictly speaking, an invention is protected by a patent, while an innovation is protected by a utility model (also referred to in some countries as a ‘petty patent’ innovation patent’, or minor patent’ or similar terms). A patent mainly concerns a product, as well as the process required to produce it or use it, while a utility model consists of an improvement to an existing product, which renders use of the product more effective.
The patent can be registered exclusively nationally (either in Italy or abroad) or through the European or international (PCT) patent procedures.
However, the scope of a patent can only be extended to include other countries in the year following the first filing; therefore, any extensions of the patent after that period will be deemed invalid.
DESIGNS
Registering a design grants special protection for the outward appearance of a new product with a unique, individual character. Registration of a design protects, among other areas, design-led products, fashion creations, special fonts, and web designs.
The design may be multiple, i.e. in some cases a single registration may include multiple versions of the same object, or multiple different objects, belonging to the same international class.
The design registration may be national, Community, or international, with each variant having characteristics that meet the different needs of the geographic coverage. Since novelty is required for protection, it is advisable not to disclose the product you wish to register before filing the application therefor.
If you wish to extend the registration of a design abroad, you must do so in the short “grace period” envisaged. Once this period has expired, the product becomes part of the art and can no longer be registered, neither nationally nor abroad (in Italy the grace period is one year, as of when the owner first discloses the product to which the design relates and this also applies to Community designs).
DOMAIN NAMES
A domain name used in business falls, to all intents and purposes, within the scope of distinctive signs since used to distinguish a business’s activity online.
Domain names and trademarks are often thought to be alike, but in fact they differ significantly in terms of registration, rights, and enforcement. For example, while a trademark cannot be descriptive (i.e. the word “jam” cannot be registered as a word mark to distinguish specific jams), there are no major obstacles to registering a domain name that describes the nature of a product.
The strategy for registering and protecting one or more domain names cannot be considered similar to that for a trademark, which requires careful research and planning, especially when starting a new business or launching a new brand.
The tool generally used to recover a domain name used by unauthorised third parties is a domain name dispute resolution, which is an administrative procedure carried out through specific authorities.
Nonetheless, there may be cases (depending on the interests at stake and the legal premises) in which ownership of a domain name is better disputed before a court of law.
The Italian legal principle known as ‘unity of distinctive signs’ envisages that a trademark owner is also entitled to own the corresponding domain name, as well as the trade name, company name, and the sign; while clearly responding to business and commercial entitlements, this principle is not always easy to apply.
Therefore, especially when starting a new business or launching a new brand, it is vital to plan out all these aspects to be able to ensure the unity of one’s distinctive signs.