Legislative Decree 30/2005 which enacted the Industrial Property Code, deals with trademark oppositions in Articles 174 to 184. The Implementing Regulation of the Industrial Property Code, contained in Decree 33/2010 of January 13, 2010 and enacted on March 10, 2010, provides a set of rules for opposition proceedings before the Italian Patent and Trademark Office (“the Office”) in Articles 46 to 63. Legislative Decree 131/2010 of August 13, 2010, which came into force on September 2, 2010, amended a number of provisions of the Industrial Property Code, including those relating to trademark oppositions at Art. 91 to 97.
The Italian opposition procedure has been designed along the lines of the opposition proceedings before the OHIM (European Community Trademark Office), although it contains some notable differences.
An opposition against an Italian trademark application must be filed within 3 months from its publication in the Trademark Bulletin, likely available online on the Office’s website around July 2011. The Bulletin will start by publishing national applications filed from 2 May 2011.
An opposition against the Italian designation of an international registration must be filed within 3 months from the first day of the month following the one in which it was published in the WIPO’s Official Gazette. Italian designations of international registrations published on the Gazette from 1 July 2011 can be opposed irrespective of the date of filing.
The deadline for filing an opposition cannot be extended beyond the 3-month term.
Oppositions may be filed only by:
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owners or the exclusive licensees of an earlier trademark registration or application, with effect in Italy, against an identical or similar trademark for identical or similar products/services;
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persons, entities and associations listed in Article 8 of the Industrial Property Code, which regulates the registration as a trademark of a portrait, a name or a sign corresponding to or including names, portraits or well-known signs owned by such persons, entities or associations.
In particular, oppositions cannot be based on:
These rights may be asserted only in Court proceedings.
If the notice of opposition is found admissible, the Office will notify the opposition to the applicant within 2 months from the expiry of the opposition term and the parties will have a 2-month period (“cooling-off period”) to explore an amicable settlement.
In the absence of an agreement within the “cooling-off period”, the Office will start the adversarial part of the proceedings by setting a term for the applicant to reply to the opposition.
Differently from OHIM’s rules of procedure, Italian rules currently provide that the opponent must submit the grounds of opposition together with the notice of opposition, within the term for opposing the application and not after the expiration of the cooling-off period. The Office, however, is under pressure to accept that the opposition grounds are filed within two months form the expiry of the cooling-off period and not immediately together with the notice of opposition within the opposition term and, if necessary, to amend the rules to that effect.
The applicant may ask the opponent, with its first reply, to prove the use of the trademark registration(s) on which the opposition is based, if granted more than 5 years before the date of the publication of the opposed mark and the opponent has a term of 60 days from the receipt of the Office’s notification to submit evidence of use. Failure in doing so will result in the rejection of the opposition.
The Office shall communicate the observations and documents filed by one party to the other, granting a term within which to submit the observations in reply.
At the end of the adversarial part of the proceedings, the Office issues a decision which includes the apportionment of the costs of the proceedings. A decision must be rendered within 24 months from the date of filing of the opposition (not including possible extension of time).
The Office’s decision on the opposition and on its admissibility can be appealed before the Board of Appeal (“BoA”) within 60 days from the communication of the decision.
The decision of the BoA can be further appealed before the Court of Cassation, but exclusively on points of law.
The trademark opposition procedure will offer to trademark owners a less expensive and presumably faster route for the resolution of conflicts between trademarks than an action for invalidity before the Courts of Justice that, so far, has been the only available option to remove from the register potentially conflicting trademarks. The Italian opposition system, however, provides the possibility of opposing only identical or similar trademarks for identical and similar goods/services; therefore, the only route open to the owners of unregistered trademarks, domain names, company names or trademarks having a reputation registered or applied for dissimilar goods and services remains the filing of an action for invalidity in the Courts of Justice.
For further information, please contact: infoitalyopposition@jacobacci.com