The modernization of Italian intellectual property law continues
and is now closer to the European standards after the introduction
of an opposition procedure against applications for new trademarks.
This new procedure is quicker and less expensive than opposition
proceedings before a court and will be handled by the Ufficio
Italiano Brevetti e Marchi (i.e., the Italian Patent
and Trademark Office, "IPTO").
The new procedure entered into force on July 2011 and completes an
ongoing process that also led to the approval in 2005 of the new
Code of Industrial Property (Legislative Decree No. 30/2005,
"IP Code").
Content of the Opposition
The opposition consists of an administrative procedure before
the IPTO through which the validity of a new trademark's
application can be contested. It is made by completing the form
provided by the Ministerial Decree of May 11, 2011 and can be filed
electronically, directly by hand at the IPTO, or sent by
mail.
The opposition can address only a single trademark filing and will
have to be in written form (in Italian), duly completed and with
evidence attached. In addition to the opponent's details, it
shall identify the applicant of the opposed trademark, the number
and date of application, and goods and services against which the
opposition is made. The previous trademark(s), the product(s),
and/or service(s) or other rights on which the opposition is based
shall also be clearly identified.
In particular, through the opposition, it is possible to contest
the registration as trademarks of: (i) new signs that are identical
to already existing valid trademarks for which an application was
previously filed by a third party and covering identical products
and/or services; or (ii) new signs that are identical, or merely
similar, to already existing valid trademarks for which an
application was previously filed by a third party and covering
similar goods or services, if a risk of confusion for the public
can occur. Moreover, lack of consent of the holders of the right
will be an additional cause of opposition if the opposed trademark
is in the form of a portrait of an individual, a personal name, or
a well-known sign.
The opposition is deemed withdrawn if the opponent does not provide
evidence of the payment of the opposition fee, amounting to
€250,00.
Terms and Deadlines
The deadline to file an opposition before the IPTO is three
months starting from the date of publication of the trademark in
the Official Bulletin ("Bulletin") and, in the case of
Italian portions of international trademarks, from the first day of
the month subsequent to the publication on the World Intellectual
Property Organization's ("WIPO") Gazette. Such
deadlines may not be extended.
The trademark publication in the Bulletin is an essential and
unavoidable condition to start the opposition procedure. To this
end, the Bulletin is published monthly on the web site of the IPTO.
The legislator decided to make the Bulletin available online, for
practical reasons and to comply with the recent trend of
simplifying administrative procedures.
Details of the Procedure
Within two months from expiration of the three-month term for
filing the opposition, the IPTO gives notice of the same to the
applicant for registration of the trademark. The IPTO informs the
applicant and the opponent of the possibility to achieve a
conciliation. In case an agreement between the parties cannot be
reached, the applicant for the registration can submit his
objections against the opposition. During the opposition
proceeding, the IPTO can invite the parties to submit further
documents, objections, and observations with respect to the
remarks, objections, and observations of the other parties.
Upon request of the applicant, the opponent who has owned the
previously registered trademark for at least five years shall
provide evidence that such trademark has been used for the goods
and services for which it was registered, or that there are proper
reasons for not using it. The lack of such evidence will result in
the opposition being rejected. Evidence required may consist of the
submission of documents, packaging samples, tags, list prices,
catalogues, invoices, shipping or export documents, photographs,
advertisements, written statements, or similar evidence.
At the end of the opposition proceeding, the IPTO can reject or
accept the opposition. If the opposition is accepted, the
application will be invalidated in whole or in part if it appears
that the trademark cannot be validly registered, respectively, for
all or for only a part of products and services mentioned in the
application. If the opposition has been filed against an
application for the Italian portion of an international trademark,
the Office shall give notice of its decision to WIPO.
The opposition proceeding can be interrupted in particular
circumstances, for example: (i) during the period granted to the
parties to reach a settlement; or (ii) if a proceeding for
invalidity of the trademark on which the opposition is based is
pending; or (iii) if the opposition is based on a mere application
for a trademark, until such trademark is actually registered.
The proceeding terminates if: (i) the trademark(s) on which it is
based has (have) been declared invalid or expired; (ii) the parties
have reached a settlement; (iii) the opposition is withdrawn; (iv)
the opposed application has been withdrawn or rejected with final
decision; or (v) the opponent ceases to be entitled to the
opposition.
Notice of the decision of the IPTO on the opposition is given to
the parties who, within 60 days, can lodge an appeal to the
Recourse Commission pursuant to the article 135 of the Intellectual
Property Code. Upon request of the parties, the Italian Supreme
Court (Corte di Cassazione) may carry out a further review
of the decision adopted by the Recourse Commission but only for
assessing the valid application of law provisions and not for the
merit of the case, which falls out of its competence.
New Opportunity
The opposition before the IPTO will obviate the need of a court
proceeding, with all its advantages concerning reduced costs and
time spent. The grounds of a trademark opposition in Italy are,
however, reduced if compared to those that may be operated at the
European level, where an opposition may be grounded on signs
already in use in the commercial practice such as nonregistered
trademarks or company names. In those cases, the opposition
procedure will not be available, and a civil suit before IP
sections of the ordinary courts will be necessary.
At least in principle, the new opposition procedure can be deemed
an upgrade of the Italian trademarks legislation to the European
standards and allows savings for opponents in terms of costs,
timing, and complexity. This innovation enhances the effectiveness
of the Italian IP law and is a further step in the modernization
that started in 2003 with the introduction of the sections of the
civil courts specializing in intellectual property. The progress
continued with the introduction of the IP Code, subsequently
modernized in 2010 with the implementing regulation that took into
account the experience of the first five years of application.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.