News

6/3/2011 10:25:00 AM

Trademark opposition proceedings in Italy now implemented

Jacobacci & Partners is pleased to announce that trademark opposition proceedings have been introduced into the Italian trademark registration system and will take effect from July 2011.

The new procedure will allow third parties to file an opposition against the grant of Italian trademark applications and territorial extensions of International registrations.

Oppositions against Italian trademark applications can be filed within three (3) months from the publication date of the application on the National Bulletin.

The publication of the Italian trademarks on the National Bulletin has been set for first week of July 2011 and will include trademark applications filed as of May 2, 2011.

Oppositions against Italian designations of International trademarks can be filed within three (3) months running from the first day of the month subsequent to the publication on WIPO’s Official Gazette.

The opposition procedure is open against Italian designations of International trademarks published on WIPO’s official Gazette as of July 2011, irrespective of their registration date. The three (3) month period therefore runs as of August 1, 2011.

Who is entitled to file oppositions?

In Italy the opposition procedure is open to:

(i) the owners or exclusive licensees of earlier Italian or Community trademark registrations or applications and International registrations designating Italy or the European Union;

(ii) the owners of image rights if the application to be opposed consists of a portrait of a person;

(iii) the owners of personal names, if the use in the trademark to be opposed can be detrimental to the reputation, credit or dignity of the person entitled to the name;

(iv) the owners of well-known personal names or signs, used in artistic, literary, scientific, political or sports fields; of denominations and abbreviations of exhibitions or events and of non-profit organizations or associations, as well as of their emblems.

Which marks can be opposed?

An opposition can be filed against identical or similar Italian trademark applications (and, in some cases, against Italian registrations) and against identical or similar Italian designations of International registrations, covering identical or similar goods/services.

How does the opposition procedure work?

The opposition procedure has been designed to mirror the opposition procedure before the Office for the Harmonization in the Internal Market (OHIM). Therefore, there is an automatic 2-month cooling-off period following the official admission of the notice of opposition, which can be extended for a further period not exceeding one year, upon joint request of both parties. If no settlement is reached, the adversarial part of the proceedings begins and the parties have to file their arguments, facts and evidence, respectively in support of the opposition and in defence of the opposed application. At the end of the proceedings the examiner issues a decision, which can be appealed before the Commissione dei Ricorsi.

Why the opposition procedure is a welcome tool in the resolution of conflicts between trademarks?

The opposition procedure consents significant savings compared to the institution of Court proceedings, among which:

• lower costs;

• shorter and mandatory timing (the decision has to be issued within a maximum of twenty-four (24) months from the filing of the notice of opposition, excluding the suspensions jointly requested by the parties);

• it gives ample room to the parties for amicable settlement, with consequent time and costs savings.

Is your trademark opposition check list complete?

• Make sure that the trademarks which are essential for your activity are duly registered and or applied for in Italy in the classes of products and services of current or potential interest: opposition cannot be based on earlier unregistered trademarks or on reputed trademarks registered or applied for dissimilar goods, as these rights can be enforced only in Court proceedings.

• Set up a trademark watch service in Italy on your most significant marks in the classes of goods/services of current or potential interest.

• If you are a trademark owner make sure to update the ownership of you trademarks displaying effects in Italy, otherwise the opposition will be held inadmissible.

• If you are an exclusive licensee make sure that your license agreement entitles you to lodge an opposition.

Who can I consult to learn more?

For additional details on this subject, please contact your usual Jacobacci & Partners’ advisor, who will be able to assist you further.
Should you have any questions you may also contact Jacobacci & Partners at infoitalyopposition@jacobacci.com.