Doing business facing the current global financial crisis has increased our attention to cost savings including those related to trademark application process and registration.
There are two basic ways to apply for trademark registration:
1. APPLYING ON YOUR OWN
Before starting the application process you have to identify the countries/geographic area where you wish to sell/commerce your products and/or offer your services.
If you wish to register your trademark in Italy you can file/(fill out the application form) your application at your nearest Camera di Commercio Office or online at UIBM (Ufficio Italiano Brevetti e Marchi) website via/adding your Italian digital signature.
If you wish to register your trademark in the European Union you can file your application online at the EUIPO (European Union Intellectual Property Office) website.
In every countries each application process always requires:
- Filling out the registration form (paper or digital one) including: owner’s data, trademark details, related list of goods and/or services.
- Paying the trademark office fees.
Once you filed your TM application you have to wait the Trademark Office exam (from one week to several months) according to relevant current Law. If no objection comes out your trademark will be officially published, otherwise may be refused and fees lost. That means if you don’t identify clearly and precisely all the required trademark information previously, nor you are aware about relevant legislation, you may risk to afford an increase in costs and even the rejection of your application.
Once published and during the following 3 months, the owners of previous identical/similar trademarks may file an opposition against your registration.
It is crucial to know that the Italian and the EU TM Office do NOT perform any previous check about identical and/or similar marks. It is the owners of previous trademarks that may file the opposition. If the opposition is estimated because of your trademark has been considered confusing similar to the opposition trademark, your trademark application will be rejected, and fees lost.
2. APPLYING WITH AN EXPERT LAWYER / TRADEMARK ATTORNEY
You can ask to a lawyer/solicitor to represent you in the trademark application process requesting in advance to him a quote which includes: the required fees for your application and the fees for his legal advice.
Once you agree with the quote, you need to send him:
- owner’s data, trademark details, related list of goods and/or services;
- a Power Of Attorney (POA) allow him to represent you in the application procedure.
Beware many websites that do not require POA because they act as rubber-stamping and do not act as lawyers representing you as applicant.
At this point the lawyer undertakes the following comprehensive legal analysis:
- Analysis of the registration requirements in order to limit the risk the application may be rejected by the Trademark Office.
- Legal examination of classes of goods and\or services to be claimed in the trademark application. The classes identify precisely the trademark legal protection area. The goods and/or services must be indicated clearly and precisely, specific enough to identify the nature of products and/or services, and not limited to the class title.
- Trademark search in the official databases in order to limit the risk the mark can be opposed during registration by previous trade mark owners. Such a search is also crucial to limit the risk that you may be condemned for counterfeiting.
The results of the legal analysis are then sent to you via a written legal opinion focused on:
1. Risks of the application.
2. Legal advice to avoid many potential disputes.
3. Recommendation to better protect the mark.
Accordingly, upon your confirmation to proceed, the lawyer files the application in front of the trademark office and monitors/supervises the application process up to the granting of the Certificate of registration.
A specialized lawyer/ trademark attorney can help you before, during, and after the trademark application process, including policing and enforcing any trademark registration that may issue.
Filing an application on your own, apparently is a cost saving because you have to pay ‘only’ the application fees for registration.
However, if you do not do a comprehensive analysis of relevant TM Law, goods and services, previous trademarks, the risk that your application will be refused is quite high, and you may suffer the following additional costs:
LEGAL FEES for:
1. drafting and filing observations in reply to TM Offices provisional refusal.
2. drafting and filing observations in reply to third parties’ oppositions;
1. replacing your trademark over your products, and any reference of its in advertising, websites, signs, as a consequence of a trademark infringement.
2. registering a new corporate name / sign / web site as a consequence of a trademark infringement.
FEES for filing a new trademark application as a result of a refusal / opposition;
COMPENSATION for damages as a consequence of a trademark infringement.
FINES as a consequence of a trademark infringement.