Consulenti in Proprietà Industriale e Intellettuale
Consultants In Intellectual Property
Fax. +39.02.48008343 - +39.02.48002648
Cod. Fisc. P.IVA - VAT REG. N. 09899330154
We assist our clients in defining their strategy for trademark protection at all stages, from the identification of the proposed sign to the definition of the goods and services and geographic scope of protection, according to the current and potential scope of their business; from registration to administrative, judicial, and extrajudicial protection; from asset and financial valorisation to the setting of a strategy for the enhancement, development and economic exploitation of their trademarks.
We offer our expertise to protect your brand in every trade and business sector.
A trademark is a sign capable of distinguishing the goods or services of an enterprise from those of other enterprises, as well as being represented in the register in such a way as to enable the competent authorities and the public to determine, with clarity and precision, the scope of protection conferred to the sign.
All signs, such as words, including the names of persons, drawings, letters, figures, sounds, the shape of the product or its packaging, colour combinations or shades, with the exception of words, figures or signs detrimental to the image or reputation of Italy, signs containing symbols, emblems and coats of arms, which are of national or international public interest, or consisting exclusively of the shape, or other feature, imposed by the nature of the product itself, necessary to obtain a technical result, or to give substantial value to the product, may be registered as a trademark.
The trademark gives its owner the exclusive right to use it in the production, promotion, and marketing of goods or in the provision of services of its enterprise; it also gives the owner the right to prohibit third parties, except with its own consent, from using an identical or similar sign for goods or services identical or similar to those for which the trademark is registered, where, because of the identity or similarity between the signs and the identity or similarity between the goods or services, a likelihood of confusion between the signs may arise for the public, which may also lead to a likelihood of association, to the extent that the public would be likely to confuse the origin of the goods or services.
A registered trademark is an exclusive, potentially perpetual right that is obtained by registration and is maintained, subject to the filing of a renewal application every 10 years, provided that the trademark is effectively used in the market, in a form that does not materially differ from the trademark as registered, and that the use is lawful and not deceptive as concerns the characteristics of the goods or services.
We assist our clients in the verification and preliminary assessment of the registrability requirements of the chosen sign as a trademark, such as novelty, distinctive character, and lawfulness, through prior rights searches and preliminary registrability opinions carried out at the client’s request. We develop with the client the prior rights search strategy, which allows to better define the scope of protection of the proposed trademark rights and prevent potential risks of infringement of exclusive rights of third parties.
In consultation with our clients, we clearly and precisely define the scope of protection (i.e. description of goods and services) as part of the trademark application, taking into account the criteria set forth in the International Classification of Goods and Services (Nice Classification) and the guidelines adopted by the trademark offices of various countries.
We define the geographical scope of protection in line with the client’s business plan, taking into consideration the countries of current and potential production, promotion, and marketing of the goods and services to be distinguished by the trademark.
We assist and represent our clients in the various stages of the registration procedure of their trademarks, in Italy and abroad, such as filing and prosecution of the application, the latter consisting of the examination and publication of the application, up to registration. We reply to any objections or remarks by the competent Trademark Office; we verify the correspondence between the trademark as filed, as subsequently published and, finally, as registered, as well as the correctness of the description of the goods and services, which define the effective
scope of protection of the trademark.
We manage the registration procedure of Italian national trademarks, European Union trademarks, International, and foreign trademarks, in accordance with the laws, regulations and international treaties, also dealing with their defence in the context of any active oppositions to be brought against third party trademarks, as well as passive oppositions brought by third parties, or in the context of active and passive invalidation proceedings and non-use cancellation proceedings, brought after registration, both in Italy and abroad.
We provide trademark watching services covering identical or similar trademark applications/registrations published on official registries, or covering trademarks publicized on the web, in the marketplace, among competitors, at customs authorities, to protect our clients’ trademarks.
We support our clients in operations of due diligence, valuation, and economic enhancement of their trademarks, in consultation with outside attorneys and other professionals with proven experience and expertise. We take care of the drafting of all types of contracts, related to IP rights, in consultation with trusted outside attorneys.
We assist our clients in the defence of their trademarks, in active and passive oppositions or actions, in the administrative, civil, criminal out-of-court, and judicial defence of our clients’ trademark rights, also in collaboration with trusted outside attorneys.