17 May 2022 Trademarks Luca Sala

Luca Sala, trademark attorney of Jacobacci and Partners, briefly talks recent changes in Italian Trademark Policy, facing three different topics: Grounds of opposition, Cancellation Actions and Fast track filings.


I'm Luca Sala, a trademark attorney of Jacobacci and Partners, an Italian IP consultancy firm with offices in Italy, Spain and France.

 Today I will briefly talk to you about recent changes in Italian Trademark Policy.

I will face three different topics: Grounds of opposition, Cancellation Actions and Fast track filings.

Grounds of opposition

In regards to grounds of opposition, just to give you a brief introduction, in Italy it is possible to file an opposition within three months from the publication of the trademark application;

First the opponent has to file a notice of opposition and the office will then give further possibility to file Grounds in Support of the Opposition;

The applicant will then be given the possibility to rebut these statements and request the proof of use of the earlier mark; this of course can be done in case the earlier registration was issued since five years before the filing of the challenge application; 

Until 2019, it was only possible to file an opposition based on the likelihood of confusion between trademarks, this means that the trademarks have to be identical or similar and claim goods and services, which are either identical or similar.

In case, the products or the goods and services were dissimilar the chances of succeeding in an opposition were very low or rather non-existent; this has been changed now since it is possible to activate a well know trademark or a trademark with a reputation.

In this case of course, first of all the opponent has to show that the earlier trademark is well known and has a reputation and then that the application would cause an unfair advantage, or be detrimental to, the distinctive character or the repute of the earlier Trademark.

So now it’s important to know: if the trademark has a reputation,  is well known,  there is a possibility to file an opposition against trademark applications that claim different products or services. This might be very useful for owners of famous well known trademarks.

Cancellation Actions

The second topic I wanted to briefly talk about is cancellation recon actions. Currently cancellations actions in Italy are still court proceedings, so they are quite cost and time intensive. Proceedings in front of an ordinary court are longer and more expensive than the ones with the Italian Patent and Trademark Office.

So, starting from January 23, 2023 it should be possible to file cancellation actions against existing registrations with the Italian Patent and Trademark Office. Why do I say “should”: because we already have the framework of the law which informs us about the different cases when we will be able to file these kind of actions, but we're still waiting for a decree by the legislator which will regulate specifically how these actions will then be managed by the Trademark Office. We really hope that within the coming months the legislator will issue this decree, so that starting from January 2023 we will be able to file cancellation actions with the trademark office.

Which kind of cancellation actions?

The most important ones are: cancellation actions for non-use, the cancellation actions for lack of novelty, cancellation  actions for lack of distinctive character and the cancellation action against registrations filed by an agent or a distributor.

Another important change in relation to cancellation actions for non-use is the fact that now the burden of proof lies exclusively on the owner of the registration to show the use of its mark. Before 2019, it was still necessary that the applicant of the non-use cancellation actions to conduct investigations to show that apparently there is no use of the trademark on the market.

Fast track Filings

Last but not least Fast Track Filings: this is quite important new introduction because unfortunately some years ago the Italian office was quite famous for its long registration process, soit took well more than a year to obtain a registration.

Now also the ordinary filing procedure has been speeded up it takes about 8 to 12 months, to obtain a registration. The introduction of the fast track proceeding allows publication of the trademark application within 5 to 10 days, after the publication the three month long opposition period starts.

So if no oppositions are filed and not objections are raised, you will be able to obtain a registration in about 6 months, which is quite fast comparing to the long registration proceeding of recent years.

There are however requirements for accessing this fast track procedure: there is only possibility to file word or device marks so unfortunately it is not possible to file so called “unconventional marks” which we consider shape marks, colour marks or sound marks. This is due to the fact that these applications are considered more complex and require a more in depth analysis by the office.

The second requirement is that products and services need to be the ones explicitly foreseen by Nice classification. So it is not possible to choose and to formulate the claims specifically. However, the Nice classification gives a broad array of goods from which we can choose on.

Lastly no priority: can be claimed in fast track proceedings. 

This was my brief introduction of the recent changes in Italian trademark policy; I hope it was helpful and clear and please do not hesitate to contact me for any further information.  I will leave my details at the end of this presentation. Thank you.