As from 29 December 2022, it is possible to file actions for invalidity and revocation against registered Italian trademarks (including Italian designations of an International Registration) before the IPTO through an administrative procedure.

These administrative proceedings represent an additional tool for trademark owners who may choose to file an invalidity or revocation action through administrative proceedings or before the ordinary courts; court proceedings remain available as an alternative, even though more expensive, route.

Invalidity and revocation proceedings may be initiated with the filing (both electronically and on paper) of an application in Italian before the IPTO.

This application must be written, motivated, aimed at requesting the verification of invalidity and complete of the supporting documentation, as well as the instrument of appointment, if any.

If the application is admissible, the IPTO sends to both parties a communication in which it grants an initial period of two months to try to reach an amicable settlement, this period may be extended several times at the joint request of the parties up to a maximum of one year.

In the absence of agreement, the owner of the contested trademark is given a further 60 days to file observations and, where applicable, to file any request for proof of use. If the owner of the contested trademark submits its arguments and any request for proof of use, the IPTO transmits them to the applicant to reply.

The UIBM issues its decision within 24 months from the filing date of the application, subject to any suspension periods.

Barzanò & Zanardo is at your disposal to give you more details about the new proceedings and to support you in starting these proceedings o to react to eventual administrative actions filed by third parties against your/your clients' registrations.

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.