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Trademarks are distinctive signs of a company. A company uses trademarks in running its business to identify its products and services, to differentiate from other economic operators and to communicate with its clients.

Trademarks represent the best tool for conveying a clear message and a strong identity to the public, enhancing customer loyalty and creating useful conditions for achieving company objectives.

Trademarks are one of the most important company assets and one of the most valuable in company operations. Marketing techniques and market needs evolve constantly, resulting in the expansion of new forms of distinctive signs that contribute to companies’ success and images. Alongside the traditional trademark registrations, many new forms can be also registered as trademarks, e.g. motion, position, color combination and sounds, and are useful to defend the company’s brands and investments, also combining protection strategies (e.g. designs and trademarks).

Other trademark types, such as collective trademarks, certification trademarks, historical trademarks, are useful tools for establishing and positioning a brand in the relevant market.

Activities

Before adopting a trademark, a search should be carried out to verify the presence of any earlier trademarks that could represent an impediment to its registration. The scope of protection of a trademark relates to the registration territory and the classes. Therefore, a search is advisable for each country and class of interest. Combining several countries in a single search is an efficient way to perform a preliminary screening.

Customs surveillance and actions are one of the most effective and least expensive means against counterfeiting. We assist our clients at every stage of the procedure, from the filing of the application with the Customs to its renewal, as well as the management of each notification issued by the Customs.

By means of due diligence, we perform analyses of a trademark portfolio before it is the object of commercial transactions, verifying the status of the trademarks from a legal point of view as well as their scope of protection.

Protecting trademarks and products from online counterfeiting is a strategic activity for the protection of intellectual property rights. Side by side with our technology partner, we have developed a platform that allows timely online surveillance and effective management of notifications and alerts, with the aim of identifying web pages showing counterfeit trademarks and products as well as obtaining their cancellation.

A trademark may be canceled even after its registration, if the necessary conditions are met. We represent our clients in invalidity actions regarding European and overseas trademarks with the collaboration of our foreign agents, as well as nullity actions before courts.

Third party observations, before the administrative offices that provide them, are one of the possible tools to prevent the registration of trademarks by third parties, thus avoiding the need to enforce one’s rights and the costs of contentious proceeding.

Opposition is an essential tool for any company intending to defend its trademarks and its brand so as to make its investments fruitful. Promptly opposing the registration of a subsequent trademark identical or similar to one’s own allows the company to effectively protect its rights as well as the efforts made to affirm its brand on the market, thus avoiding the lengthy and costly actions necessary to cancel an already registered trademark. The opposition proceeding is an efficient tool of protection.

We advise on the most adequate trademark protection. The identification of the countries and products/services to be protected is a paramount stage in the protection strategy, in line with the applicable regulations. In terms of territory, a trademark can be protected either through national, European or international filings, or through a combination thereof. Defining a good strategy from the outset means simplifying the administrative process and minimizing costs.

Every day a large number of trademarks are filed in all countries of the world, with the risk that one or more of them could be in conflict with a trademark of interest, thus causing confusion or other prejudice. To avoid such risk effectively, we assist our clients with a trademark surveillance service.