Last March, the Italian Patents and Trademarks Office took another step towards the harmonization of trademark examination practices with the member states of the European Union, with specific reference to COMMUNITY MARKS.

With the COMMUNITY MARK, a single procedure and payment of a single fee are all that is required to obtain a title which is valid for all 27 member states of the EU, resulting in a considerable saving of time and money. Since the system was set up in 1996, over a million applications have already been filed, and in the past year the number of Community marks that were filed reached record new levels, despite the difficult economic conditions in Europe.

In order to offer business owners and SMEs multiple alternatives for protecting their trademark rights within the European Union, one of the primary objectives of the OHIM (Office for Harmonization in the Internal Market, the official body for registering Community marks) is setting up a new and strong network of European marks based on reducing the differences between the different European national trademark offices and their practices. Of course it is also based on the coexistence of the national trademark offices with the OHIM.

Obviously for this principle to be effective, for business owners the choice of where to protect their trademark rights (at national or European level) must depend solely on the company’s own strategic decisions, and not on differences in practices or tools.

To lay the foundations of the European trademark network, the OHIM has, among other measures, launched several initiatives aimed at the convergence of IT tools and the voluntary convergence of practices, with special programs and, especially, by enacting legislative harmonization measures.

This harmonization project has at last been expanded with the addition of the Italian Patents and Trademarks Office which, since 9 March, has adopted the Italian translation (100% validated) of the list of products and services from the harmonized databank as the list of recognized products and services.

Use of this resource will contribute to the correct classification of goods and services chosen when filing the Community mark application, thus considerably reducing the risk of queries from the European office, as well as improving the quality of applications.

MODIANO & PARTNERS can provide you with information and estimates for registering a Community mark. We believe this is the first step for any company looking to expand their activities in other countries in the EU and, in addition to the above advantages of saving time and money, it allows you:
– To use the mark in only one part of the member states of the European Union, thus avoiding the need to cancel it in the event it is not used in the remaining member states;
– To prevent the registration and use in member states of the European Union of subsequent marks, Community or national, that are the same as or similar to the mark you filed, for identical or similar products;
– To obtain customs protection, i.e. the power to ask for infringing products to be seized at customs.

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