A Conversation with Riccardo Ciullo, European IP Lawyer and Founder of IP Wisely - Fordham Intellectual Property, Media & Entertainment Law Journal
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A Conversation with Riccardo Ciullo, European IP Lawyer and Founder of IP Wisely

A Conversation with Riccardo Ciullo, European IP Lawyer and Founder of IP Wisely

 Interview conducted by Filomena Milano: LL.M Student (US Law program) at Fordham University School of Law. Spanish IP Attorney.

 

Riccardo Ciullo is a distinguished European Intellectual Property attorney with nearly 15 years of specialized experience in European Trademark & Designs Law and direct experience working for two of the most respected intellectual property law firms in the world. Mr. Ciullo is also a Professor of the Master in Executive Compliance organized by the Instituto Superior de Derecho y Economia (ISDE) in Barcelona, Spain.

 

Filomena: In which IPL areas do you focus your practice?

Riccardo Ciullo: Mainly Trademark and Designs. I had the opportunity to specialize in European Trademark law & practice after spending 3 years in Alicante, Spain, home of the EUIPO (European Union Intellectual Property Office)—also known as the capital of Intellectual Property law in Europe. The EUIPO (formerly, the Office for Harmonization in the Internal Market, or “OHIM”) handles European Trademark and Design registration for individuals and companies worldwide interested in protecting their brands in the European Union.

We represent local and international clients interested in securing their intangible assets in very different sectors, such as fashion, biotech, hi-tech, entertainment, and more in Europe. We also recently launched offices in Mexico City.

 

Filomena: How about patents?

Riccardo Ciullo: Recently, our Patent and New Technologies practice has been growing rapidly due to the fact that Barcelona (where our firm is headquartered) is becoming the “Silicon Valley” of Europe (for different economic and social factors), attracting an ever-increasing number of technology-based startups created by young and brilliant entrepreneurs interested in securing their intangible assets, also to become more attractive to investors. For instance, when it comes to new software solutions embedded in an app or Software as a Service (SaaS), it is often challenging to determine whether a copyright or patent protection is more appropriate. Interest in the legal implications of the use and exploitation of Open-Source Software in new creations have been gaining momentum in both the IP community and amongst our clients as well.

 

Filomena: What is the situation of national and pan-European trademark protection?

Riccardo Ciullo: Trademark procedures in Europe are becoming more harmonized thanks to the efforts of the national IP office and the EUIPO. We have a trademark Directive to achieve this goal. The recent European Trademark Reform clearly pushes toward a more harmonized protection, but there is still a lot of work to be done.

In Europe, national trademark procedures (administered by national IP Offices) and European trademark procedures coexist, both aiming to grant a common unique trademark right effective across all 28 EU Member States. The European Trademark process, managed by the EUIPO, is very user friendly and cost effective. There are many Small and Medium-sized Enterprises (“SMEs”) that still prefer national rights; however we advise that, in practice, if a company is interested in protecting its brand in more than 2-3 EU jurisdictions, the company should pursue obtaining a European Trademark instead. However, there are strategic aspects to be considered before making the right decision, such as how to minimize the risks of potential oppositions based on prior conflicting trademarks registered in some EU countries, or possible refusals based on alleged descriptiveness of the trademark in that specific jurisdiction according to the local language.

 

Filomena: How long does it usually take to register a trademark? And how much does it cost

Riccardo Ciullo: This depends very much on the specific jurisdiction. For the EUIPO, when the EU trademark is filed, the office examination on formal and absolute grounds of refusal commences. This may approximately take up to 1-2 months. If all is in order, the trademark is published on the Official Gazette and a 3 months opposition period begins. If no one files an opposition during this period, the application matures into registration within a few weeks after the opposition deadline.

Recently, the European Trademark Office made available the so-called “Fast-Track” procedures. Assuming the application is in compliance with specific requirements in the application (correct classifications of the Goods & Services, no deferred payment of the application fee, etc.), the examination period is drastically reduced, allowing the trademark application to be published in just a couple of weeks from filing.

As for costs, an EU Trademark (covering 28 countries) in one class of products or services implies an official fee of EUR € 850 (apart from professional fees which may vary).

 

Filomena: Can you tell us about IP Wisely (http://www.ipwisely.com)?

Riccardo Ciullo: International companies need law firms that not only provide a cost-effective solution, but also possess the means to provide quality advice on Intellectual Property matters across all industries. IP Wisely has experience in working with some of the largest companies in the world, but also with startups and individuals. IP Wisely attorneys are official representatives before the EUIPO, the European Intellectual Property Office located in Spain (Alicante), the Spanish Patent and Trademark Office and the Mexican Industrial Property Office (IMPI) through our Mexico City office. IP attorneys at IP Wisely also practice before Spanish IP Courts as well as the Court of Justice of the European Union (CJEU) in complex Trademark and Design matters.

Based on our past experiences, and also as former in-house IP attorneys, we always try to guarantee the highest level of satisfaction to our clients—what we used to appreciate when we were the clients: multi-cultural approach to law, responsive support: (we respond to clients within 24-hours with expert preliminary advice and a transparent cost estimation), proactive legal advice, alternative fee arrangements and multi-language capacity.

 

Filomena Milano

Filomena Milano is a Spanish IP Attorney, currently an LL.M. student (U.S. Law program) at the Fordham University School of Law.