On July 8 2011 a Ministry of Economic Development decree finally implemented new rules on opposition proceedings conducted by the Patent and Trademark Office. According to the new rules, opposition proceedings are now available for all trademark applications filed in Italy since May 1 2011, and for international trademarks published since the July 2011 issue of the Gazette de l'Organisation Mondiale de la Propriété Intellectuelle des Marques Internationales. If more specific provisions are needed, these will be issued directly by the director general of the Patent and Trademark Office.

The Patent and Trademark Office's bulletin, which lists new trademark applications, started being published again in July 2011. The electronic version(1) includes tools for searching trademarks by application and registration number, by class and by owner.

Article 2 of the decree sets out the rules for filing an opposition. Among other things, it allows an opposition to be filed by certified email.(2) Article 3 specifies that information and evidence, including information relating to the effective use of the earlier trademark, must be filed in triplicate on a DVD-ROM (although the examiner may ask the opponent for samples).

The implementation of the new procedure is consistent with the general development of Italy's IP regime towards enhanced protection of famous trademarks and well-known unregistered signs. It gives rights holders a further opportunity to protect such rights.

The Patent and Trademark Office is rapidly becoming more efficient. At present, the timeframe for granting trademarks and patents is in line with the standards set by the main European jurisdictions. Moreover, on average the transcription of licences and assignments takes only a few days - impressive progress when one remembers the extended waiting times of the recent past. A new and more efficient system for electronic filing is under examination and could be implemented within 12 months.

The effects of the new opposition proceedings on brand owners will be positive, although not revolutionary. Brand owners in Italy are already in a strong position, partly due to an increasing efficiency in civil enforcement of IP rights - in particular, a more effective use of measures (ie, injunctions, seizures and orders for withdrawal from the market). Once such measures have been granted, the rights holder may refrain from commencing proceedings on the merits, unless it intends to seek damages or disgorgement of the infringer's profits. Well-known marks are already protected (in normal circumstances) against the use in trade of an identical or similar sign, even where there is no likelihood of confusion. However, opposition proceedings may be based only on a likelihood of confusion.

Since the cancellation of a copying trademark does not prevent the applicant from using it, it is advisable not merely to focus on opposition proceedings, but also to take steps to prevent infringers from using such marks by seeking urgent measures from the courts. Such measures are generally granted rapidly and reliably, and may become final unless a party starts proceedings on the merits.

However, the Patent and Trademark Office is heavily engaged in enforcing the new examination procedure for patent applications in cooperation with the European Patent Office. Too many new tasks may undermine its efficiency, unless it can call on enough well-trained personnel. However, this may present a problem owing to civil service hiring restrictions, which are aimed at cutting costs within the public administration.

For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094), fax (+39 02 5412 4344) or email ([email protected]).


(1) Available at http://www.uibm.gov.it/uibm/dati/BollettinoMarchi.aspx.

(2) The address is [email protected].