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Trademarks

We provide a range of services which include searching, filing and prosecution of trademark applications before the Italian Patent and Trademark Office (UIBM), before the European Union Intellectual Property Office (EUIPO) and before the World Intellectual Property Organization (WIPO), where we act directly as Italian and European Trademark attorneys, and worldwide, where we act in co-operation with qualified partners and associates.

Our services include the clients’ individual legal needs in addition to the filing and prosecution of trademark applications, including watches and searches for third party rights.

We provide infringement and validity opinions, licensing and dispute resolution agreements.

Our firm can also provide assessments on the asset value of trademarks and drafting opinions on these assessments.

We have a wide experience in dealing with trademark cases before the opposition divisions and appeal boards of the European Union Intellectual Property Office (EUIPO) and before the Italian Patent Courts, where we can act in co-operation with solicitors or barristers, all of them specialized in IP litigations.

Our daily activities are for example:

  • advising clients on the use and protection of trademarks and on the classes of goods or services they need to cover with their registrations;
  • carrying out searches to see if the proposed trademarks have already been registered by third parties;
  • advising on trademark availability for use or registration;
  • overseeing all procedural details of trademark registration;
  • advising clients on the countries where to seek registration;
  • filing applications in Italy as well as in Europe or on International basis;
  • composing letters to clients, to the trademark offices and other parties;
  • handling trademark renewals worldwide;
  • developing working relationships with the relevant brand managers and client marketing departments;
  • advising on the legal aspects of marketing new goods or services and their introduction into the market place;
  • dealing with general inquiries on trademark protection;
  • managing portfolio of brands in Italy, in the European Union and worldwide;
  • monitoring existing and proposed trademarks typically through our trademark watch services;
  • filing oppositions against similar trademarks published worldwide;
  • negotiating in disputes regarding trademarks;
  • taking action on trademark infringements and passing-offs;
  • drawing up appropriate contractual papers, typically trademark co-existence agreements;
  • dealing with trademarks license negotiations or assignments when such trademarks are sold or transferred.