Oppositions and cancellation actions against similar third party trademarks worldwide

A trademark opposition is an administrative procedure by which the owner of a prior trademark or other earlier right may oppose the registration of an identical or similar trademark that seeks registration for identical or similar products or services. A cancellation action is an administrative procedure filed against an already registered trademark by a third party. Jacobacci & Partners directly assists clients with these actions before the Italian, French, Spanish and Swiss Trademark Offices, as well as before the EUIPO.

In Italy, it became possible to file an opposition with the Italian Patent and Trademark Office (“UIBM”) in 2011. The Italian opposition procedure is not complex: if the UIBM determines that the opposition application is admissible, the UIBM will notify the applicant. The parties will be informed of the possibility of a two-month “cooling off” reflection period to negotiate a possible agreement. If the agreement is not reached, however, the opposition continues as an adversarial procedure before the Office.

Following the registration of a trademark, an opposition action is the first form of protection against imitation brands or counterfeits. Moreover, the opposition procedure has some significant advantages over litigation in the courts, particularly that litigation is considerably more expensive and time-consuming, there is no cooling-off period to encourage an agreement between the parties and the ultimate result is not certain.

Failure to use the opposition procedure when available may cause the owner of a prior sign to lose the opportunity to immediately block a request to register a potentially dangerous trademark. This means that the injured party would have to resort to more complex (and often more expensive) legal procedures to remedy a situation in which the copycat sign has already caused damage to the injured party’s image or market.