REGISTRATION OF TRADEMARKS FOR FRANCHISES

Strategic advice on industrial property matters starting from the prior art search of the trademark application to the litigation stage through the surveillance activity. This type of consultancy is aimed at obtaining the registration of a trademark that can be effectively enforced against competing third parties and, above all, can withstand challenges about its validity.

Better safe than sorry is the proverb that best explains the function of the prior art search and surveillance service. Imagine developing a franchise network by licensing your brand to franchisees and later discovering that the brand overlaps and clashes with an international or worse, Italian brand: that would be a major loss to be remedied, assuming you could.

A prior research is definitely necessary before the registration and use of a distinctive sign, which can be either a trademark or a domain name. Suffice it to say that an infringement lawsuit costs much more than a well-done prior art search, with the advantage that it allows one to detect the existence of a previously registered trademark and/or domain name immediately and thus change one’s own before incurring the investment in their promotion. The same proverb applies to surveillance activity. Unfortunately, with some exceptions, industrial property offices do NOT conduct surveillance for the pre-existence of identical or similar trademarks. Thus, the risk of identical or similar trademarks being registered is very high.

This entails the risk that the later mark is validated and can no longer be contested by the first registrant. To avoid this risk, we recommend:

1. Activate a surveillance service, through which the trademark owner receives “notices” relating to trademark applications that may constitute a danger to his trademark. Each alert allows you to activate an administrative opposition procedure that has a much lower cost than legal proceedings and can be a quick and effective solution against any registration by third parties.
2. Based on the result of trademark surveillance, it is possible to define the most suitable strategy towards the new registration. The same service can also be performed with reference to newly registered domain names, regardless of the extension, so as to prevent the phenomena of Cybersquatting, Typosquatting, abusive registration and use of the trademark as Metatag or Keyword, Account Squatting.