Through a Convention signed on 31 July 2015, the Italian Ministry of Economic Development (and, more specifically, the General Directorate for Combating Counterfeiting – Italian Patent and Trademark Office – UIBM) has entrusted Unioncamere with the task of creating a support programme in favour of micro, small and medium enterprises (MSMEs) for the enhancement of industrial property titles.
The project in question is called “MARCHI+2” and aims at supporting the innovative and competitive nature of small and medium-sized enterprises through the granting of concessions for the extension of their brands abroad.
Indeed, the rights to use a trademark are valid only in the State in which it has been registered.
A trademark, however, can come to have an enormous value and importance for a company and can actually play a decisive role in determining the success of a product. It could therefore be in the Company’s interest to register a trademark in all the countries of export of their goods or, at least, in those in which the Company intends to grant a trademark licence.
In such cases, it is possible to make individual national registrations by presenting a special request to each national trademark office in each country in which one is seeking protection, following the procedure laid down by the national office, in the local language and paying all due taxes.
However, the option of registering a Community trademark with OHIM (Office for Harmonization in the Internal Market) or an international trademark with WIPO (World Intellectual Property Organization) is much more appealing.
These last two options are the subject of the call for tenders “MARCHI+2”, which allocates a total of Euro 2,800,000.00 in favour of Italian companies that have incurred expenses related to the registration of trademarks during the period between 1 February 2015 and the time of the filing of the application.
The incentives to encourage the registration of Community trademarks with the OHIM are included in the so-called Measure A. In relation to the filing of trademark applications, an enterprise may request a benefit for the expenses incurred for:
- design of the new trademark;
- assistance for the registration;
- clearance search to check the existence of identical and / or similar trademarks which could conflict with the trademark being registered;
- legal assistance for trademark protection;
- OHIM registration fees.
The measures aimed at facilitating the WIPO registration of International Trademarks are outlined in the so-called Measure B, due to which ‒with reference to the filing of trademark applications‒ an enterprise may request a benefit for the expenses incurred for:
- design of the new national / OHIM trademark used as the basis of the international application;
- assistance for the registration;
- clearance search to check the existence of identical and/or similar trademarks which could conflict with the trademark being registered;
- legal assistance for trademark protection;
- UIBM or OHIM and WIPO tax expanses for the international registration.
It is also important to remember that each company may file a number of different applications for incentives, possibly also for both measures, but they may not exceed the total value of Euro 20,000.00, and that the applications to participate in the tender must be filed by 1 February 2016.
(Bologna Office– Laura De Paulis [1]– 0039 (0)51 2750020)