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A trademark is a sign of various kinds – verbal, figurative, mixed, three-dimensional, sound, color or combination of colors-able to distinguish goods and/or services.

The trademark has territorial validity and is indefinitely renewable for ten-year periods (in most countries).

There are two types of trademarks that can be registered: individual trademarks and collective trademarks. An individual trademark distinguishes the goods and/or services of a single company. It may be owned by one or more natural or legal persons. The collective trademark distinguishes the goods and/or services of a group of companies or the members of an association. It can only be applied for by associations of producers, service providers, traders or legal persons under public law.

For a sign to be validly registered as a trademark, it must meet the requirements of: novelty, distinctiveness, and lawfulness.

The process of registering a trademark in Italy involves:
-examination for verification of registrability requirements (with the exception of the novelty requirement);
-publication, following the passing of the above verification, in the official trademark bulletin issued monthly by the UIBM;
-granting and issuance of the certificate of registration after three months have elapsed from the date of publication in the Trademark Bulletin without any oppositions to registration (see below) or, in such a case, that said oppositions have been overcome.

As of July 2011, holders of prior rights can oppose trademark applications in Italy by directly filing an opposition request before the Italian Patent and Trademark Office. This procedure is considerably less costly and time-consuming than ordinary court proceedings, which, however, can always be used to request the invalidation of a trademark.

The European Union trademark, registrable with the European Union Intellectual Property Office, provides protection in the 28 member states through a single registration. This registration - filed in one language - allows its owner to exercise an exclusive right in all current and future EU member states at a reasonable cost.

An EU trademark registration lasts for 10 years and can be renewed indefinitely throughout the EU or can be retained only in certain member states by transforming the EU trademark into a series of national registrations, in the countries of actual interest. If the trademark is not renewed, the rights associated with it lapse.

It is the responsibility of a trademark owner to make sure that no one uses his trademark in the market protected by the registration. In this regard, he can monitor the press, industry publications and the Web to find out if illegal copies of his products are being sold or if there are companies using identical or similar trademarks. He can also activate surveillance services to discover any trademark application filings that are confusingly similar to his own registered trademark and, in such a case, he can enforce his prior rights by filing an opposition to the registration. If, on the other hand, he discovers that someone has registered a mark similar or identical to his own, he may seek the cancellation of its registration.

The owner of a trademark application filed with the EUIPO may initiate opposition proceedings against EU or national trademark registrations in the European Union filed after the filing date assigned to that application.

The opposition procedure follows the same steps and rules as the procedure outlined above in relation to Italian trademarks.

All decisions on oppositions are published online and all losing parties have the right to appeal.

Decisions of the Boards of Appeal may be appealed to the Tribunal within two months of notification of the decisions.

All decisions of the Tribunal may be appealed to the Court of Justice of the European Union.

The Madrid System enables trademark owners to obtain and maintain protection for their trademarks in several markets of interest through a single centralized filing and subsequent administration procedure.

Filing a trademark application under the above procedure with the International Intellectual Property Office (WIPO/WIPO) in Geneva is equivalent to the simultaneous filing of a bundle of national applications in the countries of interest, saving considerable time and money.


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