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Legally brand. The importance to protect your trademark

14 December, 2017

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Date of Publication: 14 December, 2017
Interview with Laura Di Iorio, trademark attorney for the Intellectual Property Society Barzanò & Zanardo. Tips and strategies to conceive and protect a brand on a global level: a topic often underestimated by companies.

Hi Laura, what's your job description?

My job mainly consists in supporting companies and individuals in the brand creation process, not under the creative profile (unfortunately!), but in order to assess the most appropriate protection and enforcement, as well as any possible economic use. A trademark is a sort of "monopoly", but to be valid it should be well structured and studied since the beginning and should be then monitored day by day: if you just register it, in almost all cases, it is useless.

 

Is there a correct path to follow when you are launching a new brand on a global level?

If possible, I would recommend contacting a trademark attorney since the creation process begins, in order to evaluate the value of a sign and its possible registration, even before defining it and putting it into use: this should prevent unpleasant surprises, such as finding out that your own brand -for example- has a low distinctiveness (if so, the mark would be less enforceable against similar signs) or worse, that there are one or more similar or identical already-filed-trademarks by third parties.

 

What are the risks a company comes against to, when its trademark is not properly registered?

If you use a non-registered trademark there could be the risk of clashing with third parties’ identical or similar earlier rights (for identical or similar classes): this situation could entail choosing a different sign, especially in view of possible new business developments, due to the fact that, under the Italian Intellectual Property code, the one who has "registered" first will prevail until otherwise proven.
The only exception is the legal provision of the "de-facto trademark" - unfortunately, however, the cases in which the so called earlier-use (of the de facto trademark) can invalidate the novelty of a trademark application subsequently filed by third parties does not happen so often: moreover it has to be considered that this rule is different in each country, therefore, the risk in using an unregistered sign is even higher and will necessarily reverberate even on its subsequent registration attempt.

 

Many companies, even international ones, find out the importance to protect their brand only when a legal problem occurs. Why? Is there a lack of specific education aimed to marketing managers?

Unfortunately, only few people are familiar with this matter, and they often understand the value of such legal rules after a bad experience. It would be very useful if the marketing managers could be trained a little bit on this issue. Indeed in Barzanò and Zanardo, as experts in the field, we often organize seminars and in-house meetings to let the staff (especially people who are involved in the use and exploitation of the brand) be trained about this matter.

 

Today is very difficult for a company to find a name and a free and distinctive trademark. What do you suggest, even from a creative point of view?

There is no recipe to follow, based on my experience, I would suggest you to avoid the “do-it-yourself” mood and ask to experts in each field, trying, as far as possible, to involve a trademark attorney since the beginning, in order to have a prompt and immediate feedback, with the aim of being able to focus on a brand, having already evaluated all its main points, that are not only the creative or the consumers’ possible appeal ones.

The patronymic brands or those of pure fantasy are, in general, to be preferred over others that could suggest to the public the products or their functions, characteristics and quality and that, for this reason, are usually of less value.

 

Why, as a lawyer, did you choose the Intellectual Property sector?

The way I chose this sector happened almost by chance: the issue of “consumers protection” has always interested me and thanks to a master degree I got the chance to study this matter that immediately fascinated me.
It is a branch of law that most people still do not know and for this reason it is a job that I recommend, as long as you are attentive, willing and diligent.
As for other professional fields, it is necessary to carry out an internship of 18 months and complete a qualifying examination, which is held every two years, in order to obtain the Italian Industrial Property Consultant Institute membership (Trademarks section).

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