Registering in the Historic Trademarks Register is simple

Who is authorized to submit the application?
The legal representative of the company, or their attorney who will submit the profile as a “delegate,” or a professional registered in the register who will submit the application as a “representative.”

We always recommend relying on a professional firm in Patents and Trademarks that will know how to prepare the necessary documentation to ensure a correct and quick filing.

What documents are required to prove the 50 years of the Trademark’s history?
The application requires the submission of documents depending on whether the application is based on the registration or the actual use of the Trademark. Often companies do not have continuously registered Trademarks for so many years, and actual use documentation helps complete the application.

The application requires:

• The applicant’s personal data and their qualification (whether owner or exclusive licensee with the owner’s consent);
• The details of the first registration of the Trademark with subsequent renewals and, if applicable, documentation proving its actual and continuous use for 50 years, specifying the products and services it refers to (e.g., commercial documents such as catalogs, price lists, photographs of participation in fairs, samples, packaging, advertisements, or editorials, etc.);
• Finally, a substitute declaration confirming the fundamental requirement that the Trademark is used for products and services of a national productive enterprise linked to the territory.

Naturally, the greater or lesser difficulty of the practice, if the application is based on use and not registration, fundamentally lies in the availability or not in the company of historical archives that have preserved activity documents over time.

If I am the exclusive licensee of a Historic Trademark and request its registration in the Register without the owner’s consent, can I still obtain the Registration?
The application can certainly be submitted, but in case of dispute, the UIBM will evaluate and decide, gathering as many evaluation elements as possible from both parties, to ensure that the owner’s orientation is protected.

How long does it take to obtain the Registration?
Generally, the outcome of the applications is obtained in about 60 days if the examination of the application requires only the control of the Registration documents and Trademark deposit renewals. If it was necessary to produce documentation on its use, the times are understandably longer, reaching about 180 days. Some variability must be considered, based on any observations and requests for document integration by the UIBM.

If I have submitted an application, or am about to do so, can I still participate in the Association’s initiatives while waiting for the Trademark to be accepted?
Certainly, it is possible. Companies that have submitted an application or plan to submit it within a year can join the Association’s activities as an Aggregated Member with only a small administrative contribution, while waiting for the outcome. At the end of the process, they can become Effective Members.

How much does it cost to register and renew the Historic Trademark in the Register?
The submission of the application requires a stamp duty (€15) for the online application. If you use the assistance of a professional firm, the cost will vary slightly depending on whether the application is based on the registration of the Trademark or its actual and continuous use, the latter case requiring an evaluation of the material the company can provide. No renewals are required; the registration has an unlimited duration. Only the owner can request its cancellation, which will be done in the same manner as the registration application. Therefore, there are no maintenance costs.

What rights do I acquire with registration in the Register?
Registration in the Historic Trademarks Register allows the use of the UIBM “Historic Trademark” for commercial and promotional purposes, thus certifying the actual historicity of the company’s Historic Trademark, enhancing its prestige and authenticity. It can be associated with the Historic Trademark that has obtained registration, emphasizing and valuing it especially in exports, and it cannot be modified. The Historic Trademark is not an industrial property title but a marketing tool that, when used in the communication and promotion of the historic company, becomes a competitive lever to protect the originality of the Made in Italy product against copies and counterfeits. A company whose historicity is verified and recognized by a public body will have a greater attraction for customers.

Can I include the Historic Trademark in the product’s blockchain?
ICE has recently included in the TrackIT (blockchain) project the possibility of uploading the Historic Trademark among the company’s Certificates, and the affiliated Service Providers have updated their platforms to accommodate it. Therefore, if you want to adopt this digital traceability tool to promote the product by certifying its historicity, origin, and excellence, it is possible. The project provides full support from ICE, offering all necessary assistance and free startup for 18 months. If you already have the blockchain, you need to ask your Service Provider.