As of 1 July 2011, it will be possible to file oppositions against Italian trade mark applications filed from 1 May 2011, and against Italian designations of international trade marks, regardless of their filing date, which could be earlier than 1 May, published in the Gazette of the World Intellectual Property Organization (WIPO) from 1 July 2011.
An opposition may be filed in Italy by the owner of a prior trade mark registration or application only against an identical or similar trade mark in respect of the same or similar goods or services. Therefore, the procedure will allow third parties to file an opposition against the grant of Italian trade mark applications and territorial extensions of international registrations.
Oppositions against Italian trade mark applications may be filed within three months from the publication date of the application in the National Bulletin or from the first day of the month sequent to the publication of the Italian designations of international trade marks in WIPO’s Gazette.
Afterwards, the parties have a two-month cooling-off period, which may be extended by up to a year from the first communication of the Office. Supporting documents such as registration certificates, translations and advertisements can be filed also after the expiration of the cooling-off period. Moreover, applicants may request proof of use of the opponents’ earlier marks if they were registered more than five years prior to the date of publication of the contested application. The official fees of EUR 250 shall be paid on or before the commencement of the opposition procedure. The Office may award costs to the winning party up to a maximum of EUR 300 for professional fees and EUR 250 for official fees.
Decisions rendered by the opposition division of the Italian Trade Mark Office are expected to be delivered within 24 months of the filing date of the opposition procedure.