The use of unregistered trademarks is common in many fields, but there are many potential risks. These trademarks often lack adequate legal protection, are prone to disputes and counterfeiting. As a result, businesses are prone to problems such as loss of ownership, reduced brand reputation, and difficulties in expanding their business. In addition, many businesses are not well aware of the importance of trademark registration, leading to an increasing number of intellectual property infringements. However, in Italy, individuals and organizations that have not registered for trademark protection are still protected by law. Viet An Law would like to briefly present this difference to clients through the article below.
Overview of Unregistered Trademarks
Notion
An unregistered trademark is a sign, name, image or combination thereof, which is used to distinguish goods and services of an organization or individual from goods or services of other organizations or individuals but has not yet been granted a registration certificate by a competent authority.
In other words, these are trademarks that are being used in business but have not been officially recognized by law.
Reasons for the existence of unregistered trademarks
- Habits: Many businesses, especially small and medium-sized businesses, often have the habit of using trademarks without registering.
- Cost: The trademark registration procedure is often time-consuming and costly, so many businesses want to save.
- Awareness: Some businesses are not fully aware of the importance of trademark registration.
Risks of using unregistered trademarks
- Lack of legal protection: Unregistered trademarks are not adequately protected by law. If there is a dispute, it will be very difficult to prove your ownership.
- Risk of being pre-registered: Anyone can register your trademark if you don’t pre-register.
- Difficulties in expanding the market: Business partners often require suppliers to have registered trademarks.
- Loss of brand reputation: Counterfeit and counterfeit goods will reduce the reputation of products and services and cause confusion for consumers.
In conclusion, the use of unregistered trademarks has many potential risks. To protect their rights and develop sustainably, businesses should actively register for trademark protection.
Trademark protection not registered in Italy
In Italy, although the law acknowledges the existence and use of unregistered trademarks, the level of protection they receive is very limited compared to registered trademarks.
The level of protection of an unregistered trademark in Italy
- Prior use rights: If a business can prove that it used a trademark before someone else registered it, it may have the right to continue using the trademark. However, this right is usually limited to the geography and business field that the business has used.
- Drawbacks: The level of protection of an unregistered trademark is usually lower than that of a registered trademark. Proving your right to use it can be more complicated, and it may be more difficult for your business to prevent others from using the same trademark.
Why is the level of protection low?
- Lack of formality: Unregistered trademarks do not have an official certification from the state agency, so proving ownership will be more difficult.
- Limited protection: The right to use an unregistered trademark is usually limited to a specific geography and business area where the trademark has been used.
- Ease of disputes: The absence of formal registration makes it more complicated and costly to resolve trademark-related disputes.
While an unregistered trademark can still be used in Italy, registering a trademark is the best way to protect your intellectual property rights. Signing up will give you more advantages in competing in the market and protecting your brand value.
Trademark registration dossier in Italy
The application includes
- Information identifying the type of application, type, nature, name, description and color of the trademark to be registered.
- List of goods and services, classified according to the Nice Classification of goods and services (Nice Classification).
- Any preferential rights (if any).
- Personal information of the applicant.
- Any contact (if applicable).
In addition, the applicant needs to attach: A copy of the trademark (in color or black and white).
Guide to filing a trademark application in Italy
The applicant can file a trademark registration application in three different ways:
- Apply online: Fill out and submit an online application.
- Paper Application:
- Download the application form (available in Italian at https://www.mimit.gov.it/it/assistenza/domande-frequenti) and fill in the information.
- Submit the completed application directly at the reception counter of any Chamber of Commerce, Industry, Agriculture and Crafts.
- To send an application by post:
- Download the application form and fill in the information.
- Send the completed application to the following address: Ministero dello sviluppo economico, Direzione generale per la tutela della proprietà industriale – Ufficio Italiano Brevetti e Marchi (UIBM), via Molise, 2 – 00187 Rome (Ministry of Economic Development, Directorate General for the Protection of Industrial Property – Italian Patent and Trademark Office (UIBM), Molise Street, 2 – 00187 Rome).
Online Application Guide
To access the online application service:
- Access: https://servizionline.uibm.gov.it/ (in Italian).
- Register an account on the portal.
- Return the e-signed form to receive login details that allow access to restricted areas.
If you have a business plan in Italy and want to protect your trademark, consider registering your trademark in the first place. Contact Viet An Law, hotline (+84) 9 61 67 55 66 (WhatsApp, Viber, Zalo, Wechat), for further assistance with reasonable fee!
