The process, stage by stage
Initial brief and ownership
We collect the business activities, proposed sign, markets, launch schedule and existing registrations. We establish who should be the applicant: a company, an individual or joint applicants. Where founders, agencies or licensees are involved, we identify the relevant relationships and request supporting documents. The resulting project brief sets out objectives, missing information and decisions to make.
Assessment of the name and logo
We examine the elements of the sign and its intended use, distinguishing word marks, figurative marks and other eligible forms. We assess distinctiveness, descriptive elements and potential concerns. A company name, domain name and registered trademark serve different functions. Where useful, we compare alternatives before investment in packaging or communication.
Prior rights search and risk assessment
If included in the engagement, we define a search covering the agreed territories and goods or services, considering identical and similar signs. Results are reviewed by owner, status, commercial scope and proximity to the proposed sign. The report identifies concerns found and options: proceed, modify the name, narrow the project or investigate particular rights further.
Goods, services and Nice classes
We translate the commercial brief into a proposed list of goods and services. A class groups activities; the application still needs to specify what the business supplies. We consider current activities and realistic future developments. The list cannot be expanded after filing, so new activities may require a new application. The client approves the draft before filing.
Territorial strategy and budget
We compare an Italian filing with UIBM, an EU trademark application with EUIPO and international or foreign national routes. The Madrid System allows territories to be designated, while the relevant offices assess protection under their rules. The choice considers sales, production, distribution and expansion. The proposal separates professional fees, official fees, translations and any local professional involvement.
Preparing and filing the application
Once the sign, applicant, specification and territories are approved, we prepare the necessary documents and authorisations. Filing and representation before offices are undertaken by professionals authorised under the applicable procedure. Where filing is included, the client receives the receipt, application number, date and a summary of the information actually filed, to check against the approved draft.
Examination, publication and opposition
We monitor communications and deadlines within the mandate. Offices examine applications and may request clarification or raise objections. Following publication, owners of earlier rights may oppose. For EU applications the ordinary opposition period is three months from publication. Responses, negotiations and opposition defence are assessed and quoted according to the work needed.
Registration and subsequent management
If registration is obtained, we collect the certificate and summarise the owner, sign, specification, territories and deadlines. We agree whether to arrange watching, updates and renewals. An Italian trademark registration lasts ten years from filing and can be renewed. Keeping use evidence, monitoring new applications and updating owner information supports continuing management.
Information for a quote
- The name or representation of the sign, including logo variants if available.
- Proposed owner and relationships with any joint owners.
- Specific goods, services, sales channels and customers.
- Current and planned countries, launch date, trade fairs and commercial agreements.
- Existing registrations, applications, disputes and searches.
Documents delivered at the agreed stages
The file may include the project brief, search report with a defined scope, proposed specification, territorial comparison, application draft, filing receipt and deadline summary. A certificate is delivered if registration is obtained. The proposal identifies which documents are included, who approves decisions and what work requires a further engagement.
Timing, costs and launch decisions
Preparation depends on the completeness of the brief, searches and approvals. Office processing depends on the route and any objections or oppositions. The quote separates searching, specification drafting, filing, official fees, subsequent assistance and renewals. A single advertised price cannot describe projects with different territories and classes; the client needs a clear scope to compare proposals.
Business names, product brands and software
A corporate trademark may identify the overall business; a product trademark may distinguish a particular line or offering. For apps, platforms and software, goods and services should reflect the actual distribution model. A trademark protects the sign, while a technical solution follows a separate patent process. Where both assets are involved, the work is coordinated but remains distinct.
Search limitations and risk management
A search reduces uncertainty but does not certify the absence of all earlier rights. Database coverage, unregistered rights, updates and legal assessments can affect the result. Filing is not registration, and registration does not automatically trigger action against third parties. Searching, prosecution and watching therefore have separate purposes and costs.
Extensions, use and renewal after filing
For planned extensions, assess convention priority within six months of the first regular trademark filing, checking the sign, owner, goods, territories and procedural requirements. This is not an automatic extension. After registration, organise deadlines and use evidence such as dated invoices, catalogues, packaging and campaigns. For an EU trademark, genuine use may need to be proved in applicable proceedings after the five-year grace period. Before renewal, compare the registration with the current business: a new logo or new categories may need a new application rather than a change to the existing right.
Frequently asked questions
Should I register the name, the logo or both?
Different applications can be considered according to the sign and intended use. Protection for a name and protection for a logo may serve different needs; the choice follows assessment of the project.
Does an Italian registration protect me abroad?
Protection is territorial. Other markets require an appropriate route; an EU trademark and the Madrid System do not mean worldwide protection.
Does owning a domain mean I own the trademark?
No. Domain names and trademarks are separate assets. Domain registration does not replace an assessment of earlier rights in the sign.
Can I add goods after filing?
The list can be limited but not expanded. New goods or services may require another application, so the initial brief should consider business development.
What happens if an opposition is filed?
We assess the earlier right, application and deadlines. Defence, limitations or settlement may be considered; the specific work is agreed under the relevant engagement.
Official references
- UIBM · Registrare un marchio in Italia
- EUIPO · Goods and services
- EUIPO · Priority requirements
- EUIPO · Genuine use
- EUIPO · Application and registration procedure
- EUIPO · Time limits and deadlines
- UIBM · Rinnovo marchi
- WIPO · Madrid System FAQ
Work is defined in the engagement. Procedures, formalities and fees must be checked for the relevant right and territory. References consulted on 12 October 2026.
