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Trademarks

How to register a trademark: Practical guide before deposit

A clear guide on the passages preceding the deposit: sign, anteriority, classes, territory and ownership.

Registering a trademark does not only mean filling out a question. For an enterprise, the strategic part begins before the deposit: you have to understand what you want to protect, in which markets and for which products or services.

1. Define the sign

Name, logo and other elements of identity can have different protection requirements. Before depositing it is useful to decide which components represent the really important asset for the task.

2. Do an clearance search

Research is used to identify potentially relevant prior rights and reduce the risk of conflicts. However, it is not an absolute guarantee of recordability.

3. Choose classes and territory

Protection must be consistent with the products and services that the brand identifies and with the markets in which the company operates or plans to enter. The choice of classes must therefore be linked to the commercial strategy.

4. Verify ownership

Before the deposit it is important to clarify who will be the owner of the right and how the asset will be handled in the company project.

5. Deposit and manage the route

After the deposit, follow the steps provided by the competent office. The timing and possible reliefs or oppositions depend on the type of title and the territory.

Institutional sources: UIBM / MIMIT · EUIPO
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Before the deposit it is useful to collect the definitive name or logo, the products and services, the intended holder, the countries of interest and the information necessary for the search. The more the perimeter is defined, the more the question can be consistent with the commercial project.

Research, classes and territory

The clearance search helps to identify potentially relevant rights. The classification of Nice defines the protected products and services, while the territory determines where the right will produce its effects. These three elements are closely linked.

After the deposit

Registration does not close the project: renewals, monitoring, portfolio management and protection against unauthorised use may be required. This is why the strategy should already be thought of in the initial phase.

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