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Trademark services

  • Consultancy for the protection and registration of trademarks in Italy and abroad.
  • Consultancy for the protection and registration of collective trademarks and certification marks.
  • Filing of National, European Union, International trademark applications.
  • Searches among existing trademarks in Italy and abroad.
  • Figurative-type searches among existing trademarks.
  • Drafting of license and/or right transfer agreements and recordals of assignments.
  • Oppositions in defense of registered trademarks and actions for invalidity in Italy and/or abroad.
  • Actions for invalidity of registered trademarks.
  • Legal and out-of-court actions to defend trademarks in Italy and abroad.
  • Watching to detect the publication of similar or identical trademarks.
  • Trademark watching in the web and domains.
  • Extension of registered trademarks worldwide.
  • Responses to official communications on filed trademark applications.

Please do not hesitate to contact us for any questions, requests, information or to receive a personalized quotation.


The Trademark

It is a distinctive sign that serves to distinguish goods and/or services that a natural or legal person produces or puts on the market.

Trademarks may be signs that can be represented digitally (words, including personal names, drawings, letters, figures, sounds, shape of the product or packaging, combinations, chromatic tones, holograms…) provided that they are capable of distinguishing the goods or services of one enterprise from those of other enterprises.


11 reasons to register a trademark

  • It grants the owner an exclusive right to use it
  • It protects the unique distinctiveness of your company or your product and/or service in a globalized world
  • It allows timely defense in case of infringement and it is a deterrent for a third party to use a similar trademark
  • It facilitates identification through search engines
  • It allows the acquisition of new territories on an exclusive basis
  • It simplifies the export of goods and services
  • It protects your advertising investment
  • It can be used to access financing
  • It is an intangible asset that can be entered in the balance sheet
  • It protects an asset which is going to increase its value over time
  • It is an asset to be protected


Learn more about trademarks

What are the requirements for registering a trademark?2023-08-23T13:47:44+00:00


Absence of an identical or similar sign to distinguish identical or similar goods and/or services in the same class. Before registering a trademark, or more generally using a name for commercial purposes, it is very important to carry out a search among existing trademarks to verify that the mark you have chosen is not already the subject of protection. Duly registered intellectual property attorneys know the legislation in depth, they have access to worldwide paid databases and also investigate similarities with other trademarks from all points of view (visual, phonetic, conceptual…). The UIBM does not carry out any searches among existing trademarks at the time of verification prior to publication. Failure to analyse earlier trademarks could also lead to a claim for damages from the owners of earlier trademarks or, for example, to obtain a weaker or even non-enforceable mark.

Ability to distinguish a good or service from that of others: since the main objective of the trademark is to guarantee its association to you or your firm, it is appropriate to use names that do not have any descriptive character in relation to the activities carried out. A trademark cannot be limited to words that only indicate the type of service or good to which they refer or characteristics of it, for example it is not possible to register the trademark “Excellent outdoor swimming school in Turin” for an activity that is a swimming school in Turin.

You cannot register trademarks that may offend public decency or be contrary to public order.

What is the priority right?2023-08-23T14:08:51+00:00


The owners of a trademark application have a period of six months from the date of the first filing to claim priority in their application in a foreign territory. If priority is claimed, in the event that someone else files an application later, the priority holder’s application will take precedence over those of others. In other words, the priority holder will have the opportunity to enforce intellectual property rights relating to the trademark before others.

Should I perform a background search?2023-08-23T14:08:44+00:00


The search among existing trademarks checks the possible presence of trademarks that could potentially be confused from all points of view in a specific fileld.

Before registering a trademark, or more generally using a name for commercial purposes, it is very important to carry out a search among existing trademarks to verify that the trademark you have chosen is not already the subject of protection.

Duly registered intellectual property attorneys know the legislation in depth, they have access to the worldwide paid databases and also investigate similarities with other trademarks from all points of view (visual, phonetic, conceptual…).

The Italian Patent and Trademark Office (UIBM) does not carry out any searches among existing trademarks on receipt of a new trademark application.

Failure to analyse earlier trademarks could also lead to a claim for damages from the owners of earlier trademarks or, for example, to obtain a weaker trademark.

What are the “classes” of a trademark?2023-08-23T14:01:25+00:00


The goods and services of a trademark define its scope of protection, so in order to file an application for registration or for example to carry out a prior search, it is necessary to know precisely what are/will be the goods and services that will be marked by the mark in question, on the basis of the Nice Classification, that will be the subject of the application and will define its scope of protection.

In order to register a trademark, member countries of the Nice Agreement are obliged to apply the Nice Classification and to indicate the number of classes and/or precise subclasses of the classification to which the goods and services for which the marks are filed belong, in the official documents and publications concerning their marks.

We point out that the list of goods and services covered by the trademark application cannot be expanded but only limited.

In addition to the Nice Classification, there are other classifications used for specific purposes or in specific geographic areas such as the Vienna Classification, which is used to classify figurative marks, that is marks mainly consisting of graphic elements, such as images, drawings or symbols. This classification categorizes trademarks based on specific graphic elements, such as lines, dots, shapes, colours, shadows, etc.

What is a collective trademark?2023-08-23T14:00:57+00:00


A collective trademark serves to guarantee the origin, nature and quality of certain goods or services. It is available in the European Union and also in Italy.

It is granted to an entity, natural or legal person (including consortia) that acts as a guarantor of the origin or quality of goods or services (for example trademarks of famous consortia, cheese, hotels, etc.).

The collective trademark, unlike the individual trademark, may contain indications of geographic origin precisely because it must guarantee a set of qualities often linked to geographic, historical and environmental factors.

The regulations governing use are a fundamental element of any collective trademark and must detail the persons authorized to use the trademark and the conditions for membership in the association of users of the trademark.

What is a certification trademark?2023-08-23T14:03:39+00:00


A certification mark is intended to certify certain characteristics in a good or service. These characteristics are expressed in the specific regulations of use that are filed together with the trademark application or within two months of the application.

A certification mark can be filed in Italy as well as in the European Union. However, only the Italian national certification mark can be used to certify the geographical origin of goods and services.

The regulations governing use of the certification mark shall contain:

  • a statement by the applicants that they are not engaged in any activity involving the supply of products or services of the certified type;
  • the characteristics of the goods or services to be certified;
  • the conditions of use of the certification mark;
  • the verification and watching procedures applied by the holder of the certification mark

The applicants for the certification mark cannot manage any activity involving the supply of goods and services covered by the certified mark, although they may be a natural or legal person, an institution or a body governed by public law, they must maintain the obligation of neutrality.

Which trademarks cannot be registered?2023-08-23T14:05:11+00:00


By way of example only, we mention some of the exclusions provided for

  • coats of arms, signs, emblems, of public interest, unless authorized by the competent authority
  • signs likely to deceive the public, as to geographical origin, nature or quality
  • portraits of persons without consent, names of persons other than the applicant
  • signs identical or similar to an already known sign if it may cause confusion for the public
  • signs consisting exclusively of generic designations
  • signs consisting exclusively of the shape imposed on the product by nature
  • signs that have become commonplace in everyday language or in commercial usages
What is trademark watching?2023-08-23T14:08:27+00:00


The trademark watching service involves sending out a monthly summary of published (and sometimes not yet published) applications for similar trademarks in the designated area (territory and class of goods or services) compiled on the basis of a check in official databases of countries around the world and details related to them, in particular deadlines for opposition, goods and services covered by the application and applicant.

The Italian Patent and Trademark Office (UIBM) does not carry out any searches among existing trademarks on receipt of a new trademark application.

The trademark watching service aims at enabling the applicant of the monitored trademark to file opposition to registration against potentially confusing or harmful trademark applications within the tight deadlines imposed by the various national and international competent offices (the deadline for filing opposition to an Italian and EU trademark application is 3 months from the date of publication) and is implemented following the client’s needs, allowing a complete and constant monitoring on the filing of similar names and enabling the watching of trademarks, initially not in conflict, which could become so, for example, as a result of an enlargement of the territories or goods/services marketed, also avoiding vulgarization, which involves a reduction in distinctiveness.

Resorting to the opposition procedure has the purpose of obtaining the limitation or rejection of the conflicting trademark application with a procedure that is simpler and certainly less time-consuming than a legal action, so the watching service proves to be an important tool for the protection of a name in consideration of how the growing trend in the number of worldwide filings of trademark applications is followed by the growing trend of infringement cases.

The watching offered is available in more than 200 countries and registers and can also be extended to figurative trademarks and possibly company names.

Is possible to cancel a third-party trademark?2023-08-23T14:16:22+00:00


Yes, it is possible to cancel a third-party trademark under certain circumstances. For example, if the granted third-party trademark does not comply with the registration requirements or if the trademark owner has not used the trademark for an extended period of time, it is possible to request cancellation of the trademark.

Actions for invalidity of European Union trademarks take place directly within the European Office (EUIPO) and are administrative in nature.

In Italy it is now also possible to initiate an invalidity action at the National Office (UIBM) as an alternative to filing a lawsuit, remaining an available option both in Italy and abroad.

What types of trademarks are there?2023-08-23T14:18:02+00:00


There are different types of trademarks that can be registered with the competent offices. The main categories of trademarks include:

  1. Word trademarks: they consist exclusively of words, letters or numbers, without any graphic or figurative elements. Protection extends to the name regardless of the graphic representation.
  2. Figurative trademarks: they consist of a drawing, image or logo, without any words or letters.
  3. Mixed trademarks: they consist of a combination of word and figurative elements.
  4. Shape trademarks: they consist of the three-dimensional shape of a product or its packaging.
  5. Position trademarks: they consist of an image or design that is used in a specific position within a product or packaging.
  6. Sound trademarks: they consist of a sound or melody that is used to identify a good or service.
  7. Motion trademarks, also known as animated trademarks or dynamic trademarks, use animation or motion to create a distinctive and recognizable visual effect. These trademarks consist of a sequence of moving images or a video that is used to identify a good or service.

Based on the specific needs of the client and the good or service to be protected, we can assess which types of trademark are the most appropriate to obtain the maximum protection of the trademark.

When do the rights arising from the registration of a trademark begin?2023-08-23T14:23:11+00:00


With reference to Italian national trademarks and European Union trademarks, the rights deriving from the registration of a trademark are valid from the date of filing of the application for registration with the competent office (UIBM or EUIPO) and become effective from the date of registration.

Registration gives the owner the exclusive right to use the trademark in relation to the goods or services for which it is registered, and to prohibit others from using identical or similar trademarks for similar or related goods or services, if such use is likely to cause confusion among the public.

How long does it take to obtain the registration of a trademark?2023-08-24T14:29:45+00:00


Regardless of when registration is obtained, it is important to note that trademark protection begins from the date of filing the application and it becomes effective with registration.

The timeframe for obtaining a trademark registration depends on various factors, which makes it impossible to predict with certainty how long it will take. However, as an indication, it can be said that registering a European Union trademark can take 4 to 5 months through the Fast Track regime and in the absence of impediments.

As for registering an Italian trademark, the timeframe is generally longer, but less than one year.

For international trademarks, it is not possible to make predictions about registration timeframes because they vary widely depending on the designated offices.


Why choose us


The strategic decisions related to your case will be assessed with a discussion among several consultants in order to obtain a more complete view of it and be sure to objectively consider risks and opportunities, taking advantage of the experience of each individual consultant.

A well-established long-lasting cooperation with a network of correspondents around the world ensures the highest quality in the filing and protection of trademarks abroad.


Consultants are certified professionals who have precise training in the field of Intellectual Property and are registered with the Italian Institute of Industrial Property Consultants. Their aim is to generate an economic asset and an advantage over competitors by providing assistance at all stages, from the analysis of distinctive signs to litigation.

Our consultants have:

  • Knowledge of the subject-matter and experience that enable identification of the most suitable type of application and search and proper interpretation of results.
  • Access to international paid databases and knowledge of analysis tools.
  • Experience to suggest changes so that the risks and consequences of disputes and litigation concerning trademarks may be overcome or reduced.
  • Experience in identifying the best strategies in case of trademark infringement.
  • Ability to assign a value to a trademark and recognize any weaknesses in names.


Our firm assists numerous clients in a wide variety of cases concerning the commercial exploitation of registered trademarks and is able to suggest the most suitable strategy in the conclusion of agreements for transfer of rights and exploitation as well as for drafting any related agreements (non-disclosure agreements, non-compete agreements, distribution agreements, assignments, etc.).


We are completely dedicated to our clients and offer high quality customer service. We are always available to solve any doubts or provide strategic suggestions.


Find out how we can provide assistance

Fill out the following form to request an introductory meeting or simply to obtain a personalized quotation.

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