Intellectual Property Rights

Lapse of the Trademark

If the registered trademark is not used, by the holder or authorized person, for 5 consecutive years from the registration date the trademark lapses (becomes INVALID, expires). The trademark also lapses when its use is suspended for an uninterrupted period of 5 years. The interested third party is responsible for demonstrating that it has lapsed.

The right to the trademark remains the property of the firm even when the latter is bankrupt or goes into liquidation, as these cases do not signify the definitive cessation of activity on the part of the firm. However, if the Company goes bankrupt or into liquidation, the lapse as described above may occur.

The right to the trademark lapses because of non-use when the production and/or sale exercised under that trademark definitively ceases, and that happens when the company is closed down, which means that the holder of the trademark itself no longer exists, if the trademark has not been previously and legally assigned.

14.14 VALIDATION

The holder of a registered or used trademark which is not simply known locally, who tolerates for 5 years the use of a previously registered trademark which is the same as or similar to his own, cannot request the cancellation of the previous trademark nor prevent its use for products or services in relation to which the second trademark has been used. The holder of the trademark is personally responsible for exercising surveillance.

14.16 FILING THE TRADEMARK ABROAD

For the extension of a trademark abroad, priority expires 6 months after it has been filed in Italy. To extend a trademark abroad under the priority system means that the date of validity of the trademark filed abroad starts from the filing date of

The Italian trademark. Unlike a patent of industrial invention, utility model and design and model, a trademark can be extended abroad even after the 6 months after filing in Italy and even if it is already disclosed.

When a Company starts working abroad it must think about the problem of piracy, which is very common in certain countries. That is, it has to take into account that third parties in certain countries have the habit of protecting other people's trademarks in their own name, in order to then make an illicit profit there-from, even reselling the trademarks back to the legitimate owner.

Not all countries grant the registration of a trademark without a preliminary examination regarding the merit thereof, and this examination sometimes, where it is done, is very severe and it is not always possible to pass it.

INTERNATIONAL TRADEMARK

To extend a trademark abroad it is possible to use a unified filing system, regulated by the Madrid Agreement and Protocol, which covers several

countries at the same time, designating the countries at thetime when the application is filed. (similar as the patent and design unified filing)

By using this procedure it is possible to obtain the same protection and the same means of defence againstevery infringement of the trademark that the laws of that country give to national trademarks.

15.2 CONNECTIONS

An Italian applicant can therefore file and International Trademark using either the Madrid Agreement orthe Madrid Protocol.

The International trademark is dependent on the national trademark previously registered in the country oforigin for a period of 5 years from the registration date. 47After that the 5 years have elapsed, the International trademark becomes independent of the nationaltrademark which was previously registered in the country of origin.

Legal action can be taken only in the country of origin, so it is not necessary to undertake numerous legalactions in all the countries where the International trademark has been

applied for.

15.3 PROCEDURE

The advantage of choosing the International a trademark to extend one’s rights in the above-mentioned countries is a purely economic one.

In order to file an International trademark, the holder of the trademark must have his residence, or in case of a company, its activity, in one of the countries which has signed the Convention, and he must first have filed and obtained the trademark in his own country.

International trademarks last 10 years from the date of registration and can be renewed an unlimited number of times.

Within 12 or 18 months depending if the country has signed the Madrid agreement or the Madrid Protocol, a State can raise objections as to whether the trademark can be registered in their country. Once this period of time has elapsed without any rejections being received, the trademark is considered to be accepted.

Refusals are normally given because the trademarks are not considered disctinctive.

Differences between the Madrid Agreement and the

Madrid Protocol:

• An International Trademark based on the Madrid Protocol can be filed based on an application for a trademark and not on a registration for a trademark;
• The period within which the member States of the Madrid Protocol can present objections and refusals is 18 months from the provisional registration date (12 months for Madrid Agreement);
• The fees for the individual countries of the Madrid protocol are not fixed as for the countries of the Madrid agreement, but vary from country to country and in some cases are rather high (ex. Japan);
• In the event that the International Trademark is subjected to an action of annulment within 5 years of registration, the owner can transform it into different national Trademarks in the countries of the Madrid Protocol where there are no impediments.

EUROPEAN UNION TRADEMARK (COMMUNITY)(1996)

The Community Trademark (European Union Trademark) has effect throughout the European Union as it becomes a single title.

DURATION

The registration of a Community trademark lasts 10 years from the filing date and can be renewed an unlimited number of times.

PROTECTABILITY

Signs which constitute a Community trademark cover a very wide range: signs which can be reproduced graphically, especially words, including the names of people, drawings, letters, figures, the shape of products and their packaging. These signs can be protected provided they are suitable to distinguish the products or the services of one company from the other.

In order to be registered, a Community trademark must also possess a distinctive character and cannot consist exclusively of an indication of the product's place of origin; moreover it must not be against public order, nor could it lead the consumer to a mistake.

It is possible to connect the Community trademark to the previously registered Italian trademark or any trademark already registered in the EU so that when the trademark is renewed, the pre-existing trademarks lapse and

only the Community trademark is maintained.The Community trademark involves a complicated process since, before being registered, it must undergoan examination as to merit. If the trademark does not pass the examination of merit, it is rejected com-pletely. Even though it may be difficult to obtain a European Union trademark, and in some cases even im-possible, it does however constitute a strong right.

16.3 OPPOSITION FROM THIRD PARTIES

Holders of similar trademarks in one of the States of the EU can present an opposition against theregistration. The Community trademark is rejected completely but it is possible to transform it into severalnational trademarks. In case of opposition, parties can request the cooling-off (suspension of the procedureto find a negotiation since trademarks can be nullified for non-use).

16.4 RIGHTS CONFERRED

The rights conferred by a Community trademark are substantially similar to national legislation, the holderof the trademark has the right to forbid third

parties: to use a countermark identical to the Community trademark for products or services identical or similar;

use any countermark which might create confusion among the public because of identity or similarity;

to use a countermark which is identical or similar even for products or services dissimilar from those for which the trademark was registered, since this can cause unfair advantage or damage to the holder;

to put the countermark on products or their packaging;

to import or export the products under cover of that countermark;

to use the countermark in commercial correspondence and in advertising.

16.5 LAPSE

A Community trademark lapses in the following cases:

when it has not been validly used for an uninterrupted period of 5 years and there has been no legitimate reason to have prevented it being used;

when it has become of habitual denomination in the trade of a product or a service for which it has been registered;

a partial lapse happens when a trademark lapses only.

with respect to a part of the product or the services for which the trademark was registered.

The request for a trademark to be cancelled must be presented to the European Union Intellectual Property Office in writing, and must be motivated; when the request is accepted, the trademark is cancelled from the register.

16.6 ACTIONS OF ANNULMENT

Actions of annulment:

• Absolute annulment: the trademark was registered in violation of both the absolute and relative impediments to registration
• Relative annulment: when another prior right opposes the Community trademark and there is a real risk of confusion in the public mind between the trademark and its right.

The Community trademark can also be declared null and void if its use can be forbidden according to another, pre-existing right. However, it cannot be declared null or void if the person who could present a case for cancellation has given his permission for the trademark to be registered, or has tolerated for 5c