The news has been bouncing back and forth between law firms, national Patent and Trademark Offices and IP research centers: Italy has finally implemented the trademark opposition procedure, getting in line with most EU countries.
Let's take one step back. In the international context, where most EU countries have an administrative procedure to deal with the opposition to a trademark registration by a third party claiming breach of its IP rights, Italy used to stand out by completely lacking such procedures - or, more precisely, by not implementing the opposition procedure already included in the current IP Code which has been in force since 2005. The procedure remained ineffective because the implementing Regulation had never been enacted and a system to publish the trademark applications had never been put in place. The only way for the owner of an earlier right to challenge a trademark application was to start a cancellation action through ordinary courts in Italy, which, unfortunately, are not known for their speed. As a consequence, Italy used to be a great place to do "priority-shopping": a convenient country of origin for any international trademark registration which made attacks to such registration as complicated as possible.
This misuse of differences amongst the national EU laws has now, and finally, come to an end. Last year, the implementing Regulations of the IP Code were enacted and then finally, on 8 July 2011, the long-waited Decree 11 May 2011 of the Ministry for the Economic Development came into force, detailing, inter alia, the time schedule to implement the opposition procedure.
According to the new implementing rules, the opposition procedure before the Italian Patent and Trademark Office (PTO) is applicable to national applications filed in Italy from 1 May 2011, as well as to the Italian parts of international applications published from the first July issue of the WIPO Gazette of International Marks. The owners of an earlier registered trademark (or those who filed an earlier trademark application) and the exclusive licensees of a trademark are now able to file an opposition against the registration of an identical or similar later trademark. In addition, oppositions may be grounded on the alleged violation of image rights, personal names (if their use in a third party's trademark may harm the reputation of the person entitled to the name), wellknown personal names, well-known signs used in the artistic, literary, scientific, political or sports fields, well-known names or symbols of events or non-profit associations. Different from many other jurisdictions, Italy does not allow oppositions based on non-registered trademarks or other IP rights such as corporate names, domain names or copyright.
The opposition to a national application shall be filed within three months after its publication in the Italian Official Trademark Bulletin, issued monthly on the PTO's website (www.uibm.gov.it) in the "Bollettini" section. The first issue was published on 11 July 2011. With regard to international applications, opposition may be brought within three months after the first day of the month following the month of the publication of the application in the WIPO Gazette of International Marks.
Within the following two months, the Italian PTO will verify if the opposition is admissible. If this is the case, the parties have a cooling-off period of further two months to find an amicable solution. This period can be extended up to one year, upon joint request of the parties (as opposed to the twoyear extension granted for an opposition before OHIM). If no solution is reached, the proceedings before the Italian PTO begin. Such proceedings shall come to an end within the mandatory deadline of 24 months from the date of filing of the opposition (without taking into account the cooling-off period or any other suspension of the proceedings).
Similar to the procedure before OHIM, the opponents before the Italian PTO are subject to the "use" requirements, i.e. they may be requested by the applicant to prove the actual use of their sign if their opposition is based on a sign registered more than five years before. If no proof is submitted within sixty days from the request by the PTO, the opposition will be rejected.
Finally, the official fees are in line with the average fees of other European countries and amount to 250 Euros. The overall costs of the proceedings (official fees plus professional fees within the limit of 300 Euros) are assigned by the Italian PTO when issuing the decision - in general, they will need to be paid by the losing party.
We look forward to seeing how the first procedures will be managed. Expectations are high and, hopefully, will be satisfied, although a few points, in particular the publication of the PTO's decisions, are still unclear. The best solution to the latter would be a dedicated area on the PTO website, but the issue has not yet been addressed.