A good name is chosen in two steps: first you decide what it should say and to whom, then you check that you can actually use it. The checks cover registered trademarks, company names, domains and the languages of your target markets. Official databases are free and good for ruling out problem names, but they do not replace an intellectual property professional.
Where to start: what the name has to do
Before any database, you need a brief. What should the name communicate, who is it for, and what will it sit next to on a shelf or in search results? That leads to the possible directions: descriptive, evocative or invented. A company name has to hold up across different activities over time. A product name has to be understood quickly and be easy to say.
Go into the checks with a list of names, not just one. The first favorite rarely passes every test.
When can a name be registered as a trademark?
The rules are in the Italian Industrial Property Code (Legislative Decree 30/2005) and, for the European Union trade mark, in Regulation (EU) 2017/1001. In short, a sign needs three qualities.
- Distinctive character. A name that is purely descriptive or commonly used for that product is hard to register. The Code covers this in Article 13, the EU Regulation in Article 7(1)(b), (c) and (d).
- Lawfulness. Signs contrary to law, public policy or accepted principles of morality are excluded, as are those likely to deceive the public, for example about origin or quality (Article 14 of the Code; Article 7(1)(f) and (g) of the Regulation).
- Novelty. The sign must not be identical or similar to one already known for identical or related goods or services, creating a risk of confusion (Article 12 of the Code; Article 8 of the Regulation).
One practical difference: for an EU trade mark, absolute grounds (Article 7) concern the characteristics of the sign itself, while relative grounds (Article 8, conflicts with earlier marks) come up following an opposition by the owner of the earlier mark. So a name can reach registration and still cause trouble later, which is why the prior-rights search comes first.
Where to search: the official databases
- UIBM (Italian Patent and Trademark Office): the database of Italian trademarks.
- EUIPO: eSearch plus for EU trade marks and TMview, which gathers marks from national, international and EU offices.
- WIPO: the Global Brand Database includes international marks under the Madrid System and those of many national offices, with image search as well.
- Chambers of Commerce: the Italian Business Register lets you search companies by name. It matters because a business name is protected too: Article 2564 of the Italian Civil Code requires distinguishing yours from one already in use where confusion is possible.
- .it domains: the Registro .it site shows whether a domain is free; registration goes through an accredited registrar.
How to read the results
Searching for the identical name is not enough. Check spelling variants, similar sounds and translations, and look at which goods or services the marks you find cover. These are listed by class of the Nice Classification: 45 classes, 1 to 34 for goods and 35 to 45 for services. An identical mark in a distant class may not be an obstacle; a similar one in the same class may be.
Also check how the name sounds and what it means in your target markets, and that it will not be confused with something else on social media and search engines.
Why a preliminary check is not enough
Databases are not real-time, they do not include signs that are used but unregistered, and they cannot tell you whether two names are truly confusable: that is a legal judgment. As guidance from an Italian Chamber of Commerce notes, these searches cannot be exhaustive, and for complex cases you turn to an industrial property consultant or an attorney. They handle the full prior-rights search, the choice of classes and the filing.
Our naming work stops at first checks: they let us present only names with no obvious obstacles, and tell you when it is time to bring in the professional.
If you are looking for the name of a new company or product, we cover it on the Brand Identity page.
