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New opposition procedure against trademarks in Italy

26 May 2011

Starting from 1 July 2011, a new opposition procedure comes into operation against:

  1. applications for Italian trademarks filed after 1 May 2011;
  2. international registrations designating Italy and published in the first edition of the month of July 2011 of the International Trademark Bulletin.

Opposition is an administrative procedure that is made before the Italian Patent and Trademark Office whereby proprietors of exclusive prior rights can request the Office to reject an application for a subsequent trademark in conflict as specified hereafter.
In synthesis, pursuant to art. 177 of Legislative Decree 30/2005, the following subjects may legitimately file opposition:

  1. the exclusive owners or licensees of a previous Italian or Community application or registration, or an international registration designating Italy or the European Union against an identical or similar trademark for identical or similar goods and/or services;
  2. persons, bodies and associations as per art. 8 of Legislative Decree 30/2005 which regulates cases where there is a request to register as a trademark: a portrait; the name of a person where the use thereof may damage the reputation, credit or dignity of the person who has the right to bear said name; if famous, the names of persons, signs used in the artistic, literary, scientific, political or sporting fields, denominations and acronyms of events and of non-profit-making bodies and associations, as well as their characteristic emblems.

Unlike the Opposition procedure before OHIM (the Community Trademark Office), to which the Italian legislation is referable, the opposition may not be based on the following rights:

  • unregistered trademarks or other signs used in normal commercial practice (such as domain names, business names) and which do not have a purely local significance;
  • unregistered trademarks well-known in a member State pursuant to art. 6 bis of the Paris Convention;
  • registered trademarks or still at the application stage which enjoy a reputation for dissimilar goods/services.

The above rights will continue to be activated only in a Court of Law, in one of the twelve Specialized Sections instituted at twelve Courts of Appeal located in Italy.

The opposition must be filed within 3 months, starting - for Italian trademarks - from the date of  publication in the Italian Trademark Bulletin, and - for international trademarks - from the first day of the month following publication in the International Trademark Bulletin. The deadline is final.

Once the opposition has been filed and deemed admissible, the Italian Patent and Trademark Office notifies this to the applicant of the Italian trademark opposed, and fixes a minimum period of 2 months (extendable several times upon request from the Parties for a maximum period of one year) in which the Parties may come to an amicable settlement.
If no agreement is reached, the Italian Patent and Trademark Office fixes the deadline within which the Parties have to file the documents supporting their respective cases.

During the proceedings the proprietor of the trademark opposed may ask the opponent to prove that the earlier trademark acted upon has been used, if it has been registered for more than 5 years. Such proof is to be provided within 60 days of the notification of the request by the Office, and if it is not forthcoming, the opposition is rejected.
At the end of the proceedings, and in any case within 24 months from the filing date of the opposition (except for possible periods of suspension), the Italian Patent and Trademark Office issues a decision.

The losing Party may be sentenced to refund the opposition fees , totally or partly, which amount to euro 250, and all the expenses of legal representation within a limit of euro 300.

The decisions of the Office may be impugned before the Board of Appeals within the non-extendable deadline of 60 days from the notification thereof.
The decisions of the Board of Appeals in turn may be appealed against before the Court of Cassation, but only for questions of law and not for reasons of merit.

In conclusion, this is a procedure which will allow the owners of trademarks to protect their exclusive rights more quickly, and especially more cheaply compared with the lawsuits for annulment before the Specialized Sections of the Courts which until now have been the only instrument for protection available.
Taking into account the non-extendable deadlines within which the requests for opposition must be made, it is advisable, more than ever before, for every Company to start a surveillance service over its trademarks in order to verify possible conflicts with signs filed later, and to take prompt action, where necessary.

It is true that, instead of an opposition, it will still be possible to have a later trademark annulled by taking legal action, but the costs of such an action will probably be higher, and probably the times involved will be longer.

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