With the implementation of Ministerial Decree dated May 11, 20111 (the Implementing Decree), issued by the Ministry of Economic Development, and the subsequent publication on July 11, 2011 of the first Italian Trademark Bulletin (the Trademark Bulletin2), the procedure of opposition against the registration of Italian trademarks — which has been provided by the Italian legislation for over 10 years3, but never entered into force due to the lack of implementing measures4 — finally becomes operational. This procedure will allow all parties with a legitimate interest to intervene in proceedings for the registration of Italian trademarks and file an opposition against said registration. The Implementing Decree therefore provides a remedy to the significant delay regarding the protection of intellectual property in Italy. Administrative opposition has in fact been a tool long used in many other countries to oppose the granting of their national trademarks, and throughout the European Union (including Italy) to oppose the granting of Community trademarks5.
Methods of Intervention In Registration Proceedings
The procedure is regulated by articles 174 and subsequent of Legislative Decree no. 30, dated February 10, 2005 (the Italian Industrial Property Code or I.P.C), as reformed by Legislative Decree no. 131 dated August 13, 2010 (the Remedial Decree), as well as by articles 46 and subsequent of its implementing regulation, as per Ministerial Decree no. 33, dated January 13, 2010, issued by the Ministry of Economic Development (the Implementing Regulation).
There are two distinct methods through which any party with a legitimate interest may intervene in Italian trademarks registration proceedings: observations, as per article 175 of the I.P.C (the Observations) and oppositions, as per articles 176 and subsequent of the I.P.C (the Oppositions).
Observations are a form of intervention that take place with the filing by any party with a legitimate interest6 of an observation to the Italian Patent and Trademarks Office (IPTO), together with an indication of the grounds on which, in said party's opinion, the application for registration of a particular trademark should be rejected.
Observations aim at pointing out the existence of absolute impediments to registration (impedimenti assoluti alla registrazione), which arise from the lack of requirements that the law regards as essential.
In particular, an absolute impediment is deemed to exist when the trademark:
- Cannot be depicted in graphical form7
- Belongs to the class of signs commonly used in the language or use of trade8
- Is contrary to public order and morality9
- Is exclusively composed of a generic name of products and services for which the trademark is being registered10
- Is exclusively composed of logos or other emblems considered in the existing international conventions, or that are of public interest11
- Is deceptive12
- Is a collective trademark and is not accompanied by the regulation on its use13
- is a trademark of form and as such consists of a form that is both technically and aesthetically necessitated or made necessary by the nature of the product itself or by the function for which it is intended14.
Observations may be submitted at any time during the registration process15 and must contain an indication of the exact reasons for which the trademark should be refused registration. Observation may be submitted, as mentioned above, by any party with a legitimate interest — in particular, parties may be anyone in competition with the applicant for registration. In fact, the above-mentioned parties may have an interest in removing the obstacles that any registration of the trademark may cause to their business.
The IPTO examines the observations and, if deemed relevant and important, notifies the trademark applicant, who may submit its comments in writings, within 30 days from the date of receipt of the aforementioned notification. Said comments may attach any documentation deemed suitable by the trademark applicant to disprove the Observations that have been raised16. Failure by the trademark applicant to submit any comments does not, however, result in the automatic acceptance of the Observations and thus in the rejection of the petition for registration.
No further exchange of written documents is required, nor is an oral presentation by the litigating parties. The IPTO shall make a decision on the basis of the observations and deductions, if any, submitted by the trademark applicant.
Requirements to file an opposition
Oppositions aim at enforcing the so-called relative impediments to registration (impedimenti relativi alla registrazione), which are the obstacles that can only be detected by certain entities, namely, holders of prior rights that would be violated as a result of any registration of the trademark at issue17. Oppositions are only applicable to Italian trademark applications filed after May 1, 2011 as well as to international trademark18 applications published in the July issue of the Gazette de l'Organisation Mondiale de la Propriété Intellectuelle des Marques Internationales19 (the Gazette), and can be proposed20:
- When the trademark for which the application is being submitted
is identical or similar to a trademark already registered by others
in Italy, or to a foreign trademark having effect in
Italy21, according to an application filed at an earlier
date (or taking effect at an earlier date under a
priority22 right or a valid claim to seniority),
provided that the earlier trademark is registered: (i) for
identical goods or services, or (ii) for related products or
services, where the similarity between the signs and identity or
resemblance of the products or services may determine a likelihood
of confusion for the public, which may also consist in a likelihood
of association between the two signs23 .
In this regard, it is important to note that an Opposition may not be filed when the earlier trademark expired more than two years before (three if it is a collective trademark), or may be deemed revoked for non-use due to it not being used for at least five years24
- When there is no consensus by the people that have a claim on a name, a company name or a picture included in the trademark.
Consistently with the foregoing, the subjects entitled to file an Opposition25 are: (a) the holder of a trademark already registered in Italy, or having effect in Italy from an earlier date, (b) the holder of an application for trademark registration filed in Italy at an earlier date, or having effect in Italy at an earlier date by virtue of a right of priority or a valid claim to seniority, (c) the licensee of the exclusive use of the trademark and (d) persons whose names or portrait appear in the trademark, as well as institutions and associations whose names are included in the same26.
The terms and modalities for filing an Opposition
An Opposition, in order to be admissible, must be submitted in writing, substantiated and documented, within a term of three months from: (a) the date of publication in the Trademark Bulletin of the application for registration of the contested trademark, or from registration of a trademark the application of which has not been previously published27, or (b) in the case of an international trademark designating Italy, the first day of the month following the one in which the trademarks was published in the Gazette28.
An Opposition may only concern a single trademark application or registration, shall be admissible only if filed in Italian, and must contain, under penalty of inadmissibility, the following information: (a) as to the trademark towards which the Opposition is directed, the identification of the applicant, the number and date of the application for registration, the products and services protected by the trademark, and (b) as to the trademark or right of the opponent, the identification of the earlier trademark (and of the related products and services), or to the right to the name, portrait or the company name included in the trademark to which the Opposition relates29. The notice of Opposition must be prepared in accordance with a form attached to the Implementing Decree, and an original copy (with a revenue stamp of Euro 14.62) and three copies (one of which will be returned by the office as receipt) must filed with the IPTO. Alternatively, an original copy (with revenue stamp of Euro 14.62) and two copies can be sent by mail to the IPTO30. It may also be sent by electronic certified mail31. The opponent is also required to pay a fee of € 250.0032 on an account payable to the IPTO no. 35596006 (certificate of payment must be attached to the Opposition) 33. In the absence of that payment, the Opposition is deemed to have been withdrawn34.
Examination of the Opposition
In the presence of an Opposition, the IPTO35 examines, within two months from expiry of the term for filing the same, whether the Opposition is admissible36 and receivable37, and then notifies the subjects who submitted the trademark application (the Applicant), by also sending, to both the Applicant and the opponent (the Opponent), a series of additional information38. The parties are also notified of the possibility to reach an agreement within two months from the date of the aforementioned notification. The term may be extended upon joint request by both parties, up to a maximum of one year39.
Should this settlement agreement not be reached, the IPTO shall send to the Applicant all the documentation sent by the Opponent and grant the Applicant a 60 days-period, starting from the date of receipt of the notification, to file a written defense brief. Within the same deadline, in the event that the Opposition relates to a trademark that has been registered for five years or more, the Applicant may also request for the Opponent to provide documents proving that such trademark has actually been used, by the Opponent or with the latter's consent, for the products and services for which it was registered or to offer valid reasons justifying the non-use of such trademark. If such evidence is not provided within 30 days, the Opposition shall be rejected40. In addition to the above, the Opponent may also submit (within two months from expiry of the date by which a settlement may be reached), if it hasn't already done so, some additional documentation41.
The IPTO, if it deems it necessary, may, within term set by the IPTO, ask the parties to provide further documents, arguments and comments relating to the allegations of the other party. Said communications are sent to both parties, and the IPTO may grant each party a proper term to answer.
Stay and extinction of the Opposition procedure
An Opposition procedure is stayed under certain circumstances, such as42: a) during the time limit granted to the parties for the purpose of reaching a settlement agreement; b) if opposition is based on a trademark application, until the registration of such trademark43; c) if opposition is based on an international trademark, until the expiry of the time limit for the refusal or the filing of an opposition against the registration of such international trademark before the WIPO, or the related examination or opposition procedures have been completed; d) if the opposition is proposed against a national trademark subject to re-examination following the filing of observations, until the end of the relevant re-examination procedure; e) if a proceeding for invalidity or revocation is pending against the trademark on which opposition is based, or which is relevant to the ownership of the right to registration44, until the judgment becomes final (provided that the applicant files an appropriate request for stay) and (f) as otherwise required by the Implementing Regulation45.
The opposition procedure is extinguished if: a) the trademark on which the opposition is based has been declared invalid or has been revoked through a final judgment; b) the parties have reached an agreement; c) the Opposition is withdrawn; d) the application, being the subject matter of the Opposition, is withdrawn or rejected through a definitive judgment; e) whoever filed the opposition ceased to be entitled to do so 46.
The decision on the Opposition
At the end of the proceedings, the IPTO either awards the Opposition and rejects the application for registration in whole or in part (depending on whether it appears that trademark cannot be registered for all or for just a part of the products and services mentioned in the application), or rejects the Opposition47. In the case of an Opposition concerning an international trademark designating Italy, IPTO shall also communicate its decision to the WIPO.
The measure by which the IPTO shall declare the Opposition procedure unacceptable, inadmissible, or extinct or by which it awards, even in part, or rejects the Opposition is communicated to the parties, which, within two months from receipt of such communication may to appeal to the Board of Appeals of the IPTO48.
1 Published on the Official Gazette no. 157, dated July 8, 2011.
2 The Trademark Bulletin is a publication made available at least once a month on the IPTO website and where, pursuant to article 187 of the I.P.C, filed trademarks applications and registrations granted during the reporting period are posted.
3 The opposition procedure was already provided in Legislative Decree no. 447, dated October 8, 1999, which added to Law no. 929, dated June 21, 1942 (the so called "Trademark Law") articles 8-bis and 8-ter, as well as articles from 32-bis to 33-bis, which regulated, respectively, the procedure for opposition to international trademarks (further discussed in footnote no. 18 below) extended to Italy and to Italian trademarks. The provisions of the above mentioned articles were later incorporated in existing articles 174 and subsequent of the Italian Industrial Property Code.
4 Article 184 of the Industrial Property Code subordinated the entry into force of the opposition procedure to the implementation of a decree by the Ministry of Productive Activities (now the Ministry of Economic Development)
5 Community trademarks are valid within the entire territory of the European Union. They are granted by the Office of Harmonization for the Internal Market ("OHIM"), which is based in Alicante, Spain and are governed by EC Regulation no. 207, dated February 26, 2009 (the "Community Trademark Regulation").
6 Article 175, paragraph 1 of the I.P.C sets out that: "Any interested party may, without, for such reason, becoming a party to a registration procedure, address written observations to the Italian Patents and Trademarks Office, specifying the reasons for which a trademark must be excluded ex-officio from the registration procedure".
7 Pursuant to article 7 of the I.P.C "Any sign capable of being represented graphically, in particular words, including personal names, designs, letters, figures, sounds, the shapes of goods or their packaging, the combinations or chromatic shades, may be the object of registration as a trademark, provided that such signs are capable of distinguishing goods or services of one enterprise from those of another enterprises." As for the graphical representation of elements other than words and drawings, it should be noted that: (i) the shape of the product, which may be registered as a trademark under article 9 of the I.P.C (the so-called shapetrademarks), is to be represented graphically by reproducing its image; (ii) colors may represented graphically by being described in accordance with the at least one of the internationally recognized color identification codes; and (iii) sounds may be graphically represented by symbols (such as, in particular, musical notes). There have been discussions as to whether odors may be registered as trademarks (olfactory trademarks). Those who accept odors as trademarks, generally believe that the graphical representation can be obtained by means of a verbal description of the fragrance, possibly supplemented by an analysis of it components.
8 Article 13, paragraph 1 a) of the I.P.C provides that; "Trademarks lacking a distinctive character may not be the object of registration and in particular: a) those which consist exclusively of signs which have become customary in current language or in use in trade." The prohibition stems from the fact that signs in common use lack of distinctiveness, that is, they are not effectively able to distinguish the goods of one trader from those of another trader, and thus are not able to perform the essential function of trademarks, which is to relate a particular product to a specific company.
9 Article 14, paragraph 1 of the I.P.C provides that: "The following shall not be registered as trademarks: a) signs contrary to the law, public policy or accepted principles of morality...". Example of signs contrary to law are the emblem of the five-pointed star used by the Red Brigades, or the fasces. An example of signs contrary to principles of morality are those likely to offend the common sense of decency (Vanzetti - Di Cataldo, "Manuale di diritto industriale" (Industrial Law Handbook) , Milan 2009, p. 201). If the opposition to the law, public order or morality arises at a later time, the trademark may be cancelled (Article 14, paragraph 2, letter b) of the I.P.C.).
10 Pursuant to article 13, paragraph 1 b) of the I.P.C: "Trademarks lacking a distinctive character may not be the object of registration and in particular: .... b) those consisting only of generic names of products or services or of descriptive indications referring to the same, such as signs which in trade may serve to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the product or of rendering of the service, or other characteristics of the product or service". Also in this case the prohibition derives from the lack of distinctiveness of the signs in question (see endnote 8). It should be noted that it allows the registration of trademarks which, to some extent, recall the characteristics of the distinctive product or service (so-called expressive trademarks), provided that the descriptive element is accompanied by some element of differentiation (consisting of, for example, suffixes, prefixes or a particular distortion of the word).
11 Pursuant to article 10, paragraph 1 of the I.P.C: "Escutcheons and other signs taken into account by international conventions currently in force and regulating this subject, in the cases and at the conditions mentioned thereby, as well as signs containing symbols, emblems and escutcheons which are of public interest shall not be registered as trademarks, unless the authorization to registration thereof has been granted by the competent authorities."
12 A "deceptive" trademark is a trademark that is likely to mislead the public, by sending erroneous information on the characteristics of the distinctive goods or services, and in particular with regards to their geographical origin, nature or quality (Article 14, paragraph 1, letter (b) I.P.C). Any deceptive nature occurring after registration, due to the way and context in which the trademark is used by the owner, or by others with its consent, may result in the cancellation of the trademark (Article 14, paragraph 2, letter. (a) of the I.P.C).
13 A collective trademark is a trademark used by a number of entrepreneurs joined together in a consortium, and serves to guarantee the origin, quality and nature of a product or service (like, for example, the trademark Parmigiano Reggiano). In this regard, article 11, paragraph 2 of the I.P.C provides that: "Regulations concerning the use of collective trademarks, and the controls and related sanctions, are to be attached to the application form for registration; amendments to the regulations must be communicated by the applicants to the Italian Patents and Trademarks Office in order for the same to be included among the documents attached to the application."
14 Pursuant to article 9 of the I.P.C: "Signs which consist exclusively of the shape which results from the nature itself of the product, of the shape of the product which is necessary to obtain a technical result or of the shape which gives substantial value to the product may not be registered as trademarks.".
15 Before the reform introduced with the Remedial Decree provided, article 175, paragraph 1 of the I.P.C provided that Observations were to be submitted by the same timeline prescribed by art. 176, paragraph 1 of the I.P.C for the filing of oppositions (see paragraph 2.2). However, article 175 of the I.P.C was reformed by the above mentioned Remedial Decree, and does not currently provide a time limit for filing observations, in line with the provisions of the Community Trademark Regulation (article 40), which also does not provide any time limit for filing observations relating to a community trademark application.
16 Under article 175, paragraph 2 of the I.P.C, the IPTO is not required to notify the applicant of any observations that are not deemed relevant or significant: said observations shall simply be archived.
17 Relative impediments to the registration of a trademark are, in principle, based on causes of relative invalidity (cause di nullità relative), which are circumstances that may lead to legal proceedings for revocation. There is, however, no perfect symmetry between the two categories in the sense that all causes of Opposition also constitute grounds for revocation, while the opposite is not true. The Opposition, in fact, may be brought to enforce a number of earlier rights more limited than those that may be invoked in proceedings for revocation. In fact, the latter rights include, in addition to the pre-existence of an identical or similar trademark for identical goods or services and the unauthorized use of another subject's name or portrait: (i) the preexistence of distinctive signs of others that are different from a registered trademark, such as a de facto trademark, a business name, a sign or a company name (see article 12, paragraph 1 b), of the I.P.C) (ii) the preexistence of a well-known or reputable trademark (article 12, paragraph 1 e) and f) of the I.P.C), (iii) the preexistence of a copyright or of any other right protected under the current industrial property legislation (Article 14, paragraph 1 c), of the I.P.C), and (iv) the registration of a trademark by someone that is not entitled to do so under the law (Article 118, paragraph 3 b) of the I.P.C) (see Sena, "Il diritto dei marchi" Milan 2007, pp. 16 - 17). In said textbook it was discussed that that the reason for this imperfect symmetry resides "in the legislature's intent to make it as easy as possible for the IPTO to assess of the opposition, limiting it to an investigation which may be carried out exclusively on the basis of documents".
18 The so-called international trademark is not a single supranational trademark (like a Community trademark), but is rather a central depository system: who is interested in getting more registrations in different countries may, instead of submitting many applications to different countries, submit a single application to the World Intellectual Property Organization (WIPO), which is based in Geneva or, for Italian companies, to the IPTO, and obtain, upon completion of the proposed procedure, as many national trademarks as are the countries designated in the application. The international trademarks is governed by two different agreements, the Madrid Agreement (hereinafter, also the Agreement) and the Madrid Protocol (hereinafter also the Protocol). The agreement dates back to April 14, 1891 (although it has been amended several times), and is the text that introduced the system of international registration.
The Protocol was adopted of June 27, 1989, in order to innovate some aspects (not of less importtance) of the system created by the previous agreement. There are States who only adhere to the Agreement, some just to the protocol, and others who adhere to both. Italy belongs to the latter category. The main features of international registration, as provided by the Protocol, may be summarized as follows: (i) the applicant for an international registration may base his application not only on a national trademark that has already been registered (as was envisaged by the Agreement), but also on a simple application for registration (Article 2), (ii) each of the states for which the applicant seeks protection of the trademark may refuse to grant such protection within 18 months (instead of 12, as was envisaged by the Agreement) from submission of the application. This period may be extended in case of an Opposition against the international registration (Article 5), (iii) the Trademark Office of each country may impose designation taxes, which can be determined freely, but may not be higher than those which said country could have collected if the applicant had chosen to file a national trademark in that country (Article 8). On the other hand, the Agreement provided for a fixed tax, plus additional taxation (on a fixed basis), for each designated country and for each class of goods (in addition to the third) which included the goods and services to be protected; (iv) if an international registration is annulled because the national trademark on which it is based is no longer enforceable (art. 6), the applicant has the right to turn it into applications for national registrations, which take effect from the date of filing of the international registration application (Article 9-quinquies).
19 The Gazette is a publication made available at least once a month on the WIPO website, which contains a list of applications for international registration of trademarks filed during the reporting period.
20 Namely, in cases of lack of novelty of the trademark, as provided under article 12, paragraph 1 c) and d) and 175, paragraph 5 of the I.P.C.
21 Like in cases where a Community or international trademark is extended to the Italian territory.
22 This may be, in particular, the so-called right of unionist priority, provided under article 4 (A) of the "Paris Union Convention for the Protection of Industrial Property", signed on March 20, 1883 (and amended several times). Under said provision anyone, in one of the countries adhering to such Convention (including Italy), who has filed a trademark application may, in any of the other countries, deposit in the six months following the date of such filing a trademark application which will actually take effect from the date of first deposit. Therefore, a trademark application filed by other parties within the same timeframe going from the first to the second deposit, will not be considered new and therefore valid for the purposes of applicable law. This provisions is reflected in article 4, paragraphs 1 and 2 of the I.P.C: "Any person having properly filed an application aimed at obtaining an industrial property title in, or for, one of the Countries party to an International Convention ratified by Italy acknowledging the right of priority or its successor in title, shall enjoy a right of priority as from the date of the first application, for the purpose of filing an application for an industrial patent, a utility model, a patent for new plant variety, a registration of a design or model and registration of a trademark, pursuant to the provisions set forth in article 4 of the Paris Union Convention. The period of priority shall be twelve months for invention patents and utility models and new plant varieties, and six months for designs and models and trademarks."
23 Association between trademarks shall occur in the event that consumers, even when not likely to confuse the two, deem in any case that the two trademarks recall the same enterprise due to their similarity.
24 Revocation due to non-use is provided under article 24 of the I.P.C.
25 See article 177 of the I.P.C, which makes reference to article 176 of the I.P.C.
26 See article 8 of the I.P.C.
27 See article 179, paragraph 2 of the I.P.C: "If the trademark application, set forth in paragraph 1, has not yet been published, the registration publication is accompanied, in such event, by the notice that such publication is the starting time limit for the opposition. The granting of the opposition causes the partial or total strike-off of the trademark".
28 See article 176, comma 1 of the I.P.C.
29 Art. 176, paragraph 2 of the I.P.C.
30 If sent by post (to be sent via registered mail with acknowledgment of receipt or other delivery services), the date of receipt of the letter or file is considered the filing date (Article 47, paragraph 2 of the Implementing Regulation).
31 To the email address "imp.lcuibm.div2@pec. sviluppoeconomico.gov.it".
32 The amount is specified in the Decree of the Ministry of Economic Development dated April 2, 2007, Table A)
33 See the Newsletter issued by the Ministry of Economic Development no. 582, dated July 11, 2011.
34 See article 176, paragraph 3 of the I.P.C.
35 Decisions regarding Oppositions are made by officials appointed for a period of two years as per decree issued by the Director General, selected amongst the executive or managerial members of the IPTO holding a law degree. The examiners who were involved in the examination of a trademark application cannot decide on the oppositions relating to the same trademark (Article 183, paragraph 1 of the I.P.C).
36 An opposition is declared inadmissible if: a) it was filed before the publication of the trademark against which it is directed, i.e. after the expiry of the time limits set for filing the Opposition (see paragraph 2.2.2); b) does not contain the information specified in Article 176, paragraph 2 of the Code; c) is based on grounds other than those prescribed by law; d) the Opponent is not among the persons entitled to file the Opposition (see Paragraph 2.2.1); e) the signature of the Opponent or of its representative is not on the Opposition; f) it concerns two or more applications and, upon a request by the IPTO to limit the Opposition to a single application within a term of thirty days, the Opponent does do so or fails to reply to said request (Article 48, paragraph 3, Implementing Regulation).
37 An Opposition is declared unacceptable or inadmissible if the Opponent may not be identified or reached (article 48, paragraph 2 of the Implementing Regulation).
38 More specifically, the IPTO will provide the information regarding: a) Article 8, paragraph 1 of law 241/1990 dated 7 August 1990 (Regulations on the Administrative Procedure), including: (i) the purpose of the filed proceedings; (ii) the office and the person in charge of the proceedings; (iii) the date by which the proceedings must be completed and the remedies in the event of inaction by the administration; (iv) the office where documents may be reviewed; b) the measures referred to in Article 51 of the Regulations for Implementation (i.e. the appointment to the examiners of the Opposition); c) the measures for admissibility, suspension and termination of the procedure, if required; d) entitlement to proceed with a settlement, pursuant to article 178, paragraph 1 of the I.P.C, within two months from the date of the notice and the opportunity to extend this term with simple application for an extension; e) the right of the opponent to submit additional documentation referred to in Article 176, paragraph 4, of the Code (see footnote 41); f) the Applicant's right to withdraw, divide the application, and to restrict or specify the products and services claimed in the same; and of the opponent to withdraw all or part of the Opposition up until the IPTO has not made a decision.
39 Article 178, paragraph 1 of the I.P.C and article 60, paragraph 2 of the Implementing Regulation.
40 Article 178, paragraph 4 of the I.P.C and article 53 of the Implementing Regulation. If the actual use is proven only for some of the goods or services for which the earlier mark is registered, for the sole purposes of examining the opposition, it is considered only for said part of the products or services. The documents required to prove use must relate to the place, time, to the extent and nature of use of the earlier trademark. They may be, for example, documents and samples of packaging, labels, price lists, catalogs, invoices, shipping documents, photographs, newspaper advertisements, written statements and similar means.
41 Namely: a) a copy of the application or certificate of registration of the trademark on which the opposition is based, unless these are national certificates or application and, where appropriate, documentation relating to the right of priority or seniority from which it benefits, and the translation of the latter into Italian; b) any other documentation proving the alleged facts; c) any documentation necessary to demonstrate entitlement to file an opposition, where the earlier trademark is not in its name in the register kept by the IPTO; and d) where a representative has been appointed, the related deed of appointment (see article 176, paragraph 4 of the I.P.C.
42 See article 180, paragraph 1 a) – e) of the I.P.C.
43 It should be noted that, pursuant to article 2 of the I.P.C, the rights of exclusive use of a trademark are acquired as a result of registration. Therefore, where the opposition is based on a trademark undergoing the application process, it is necessary to stay the proceedings, because only in the event that the trademark is actually registered will the holder be entitled to file an opposition against the registration of the subsequent trademark.
44 It should be noted that the IPTO is exempted from checking whether the person filing the registered trademark (or patent) actually has the right to register.
45 Under Article 54 of the Implementing Regulation, the Opposition may also be suspended: (i) in case of rejection of international trademark on which the Opposition is based, until the adoption of the final measure; (ii) upon a request made by the Applicant, if the Opposition is based on a Community trademark published less than three months before, until the expiry of the term to file an opposition before the OHIM (which is of three months), or upon expiry of said period, until the registration of the trademark; and (iii) upon a request made by the Applicant, if the Community trademark of the opponent is subject to revocation or cancellation proceedings before OHIM, until the decision is delivered in relation to those proceeding.
46 Article 181 of the I.P.C.
47 The decision is made within 24 months from the filing date of the Opposition (Article 56, paragraph 1 of the Implementing Regulation). In deciding whether to reject or accept the Opposition, the IPTO shall determine if the losing party must reimburse all or part of the other party's costs relating to the right of opposition and, within the limit of €300.00, the costs of any professional representation in proceedings (Article 56, paragraph 4, of the Implementing Regulation).
48 The Board of Appeals, is the competent body to rule on appeals against the decisions of the IPTO. It comprises of a chairman, an additional chairman and eight members chosen among the magistrates which are not of a lower rank than the of judge of a Court of Appeal (Consigliere d'Appello), in consultation with the Higher Magistracy Council (Consiglio Superiore della Magistratura), or state higher education or university law professors specialized in the field. The Commission is divided into two sections, chaired by the Chairman and the additional Chairman. The Chairman, the additional Chairman and the members of the Commission are appointed by the Minister of Productive Activities and they hold office for two years (see Article 135 of the I.P.C).
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.