Why the trademark?
The brand has the essential function of allowing the consumer to distinguish certain products or services from those of competitors as well as to trace them back to a specific entrepreneurial source, guiding him in his subsequent purchasing choices. If, on the consumer's side, the trademark performs a function of qualitative homogeneity, for the entrepreneur it is a promotional and advertising tool, as well as a commercial strategy aimed at persuading the public and a vehicle for its founding values.
The registration of a trademark - which may include not only verbal elements, but also logos, graphic elements, colors, shapes, sounds - gives the applicant an exclusive right to use the trademark on the market, preventing third party competitors from using and registering identical or similar signs.
The requirements for registering a new trademark
For registration purposes, the chosen sign must be:
new, i.e. not already adopted by third parties for the same products or services in order to avoid confusing episodes to the detriment of consumers. In this regard, it is always advisable to carry out preliminary investigations of prior art;
distinctive, i.e. not consisting of generic names or descriptive of characteristics of the goods/services distinguished;
lawful, i.e. not contrary to law, public order or morality.
Considering the strategic importance of registering one's own distinctive signs, the choice of a trademark is an essential moment, prodromal to the subsequent decisions in terms of marketing, sponsorship and market positioning: a scarcely distinctive trademark makes the company not easily recognizable and can translate into a loss in terms of wasted investments and lost earnings.
The choice of registering a trademark, as opposed to merely using it, is undoubtedly a more advantageous option, as it offers its owner a potentially perpetual protection, with a certain date and effectiveness throughout the national territory, as well as being easily actionable against the use and registration of identical or similar signs by third parties. Moreover, the registration of a trademark can be extended to the European Union, as well as to any non-European territory which constitutes a market of interest.
On the contrary, a de facto trademark (i.e. unregistered), although not exempt from protection in absolute terms, implies a complex and economically burdensome burden of proof in order to be enforceable.
In conclusion, the decision to invest in the protection of one's own distinctive signs is not only the easiest weapon against counterfeiting, but above all the main instrument of affirmation and recognizability on the market.
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Author: Chiara Tavagnacco - Trademark Attorney - ctavagnacco[at]jacobacci.com