Recitals

With the implementation of Ministerial Decree dated May 11, 20111 (the Implementing Decree), issued by the Ministry of Economic Development, and the subsequent publication on July 11, 2011 of the first Italian Trademark Bulletin (the Trademark Bulletin 2), the procedure of opposition against the registration of Italian trademarks — which has been provided by the Italian legislation for over 10 years3, but never entered into force due to the lack of implementing measures4 — finally becomes operational. This procedure will allow all parties with a legitimate interest to intervene in proceedings for the registration of Italian trademarks and file an opposition against said registration. The Implementing Decree therefore provides a remedy to the significant delay regarding the protection of intellectual property in Italy. Administrative opposition has in fact been a tool long used in many other countries to oppose the granting of their national trademarks, and throughout the European Union (including Italy) to oppose the granting of Community trademarks5.

Methods of Intervention In Registration Proceedings

The procedure is regulated by articles 174 and subsequent of Legislative Decree no. 30, dated February 10, 2005 (the Italian Industrial Property Code or I.P.C), as reformed by Legislative Decree no. 131 dated August 13, 2010 (the Remedial Decree), as well as by articles 46 and subsequent of its implementing regulation, as per Ministerial Decree no. 33, dated January 13, 2010, issued by the Ministry of Economic Development (the Implementing Regulation).

There are two distinct methods through which any party with a legitimate interest may intervene in Italian trademarks registration proceedings: observations, as per article 175 of the I.P.C (the Observations) and oppositions, as per articles 176 and subsequent of the I.P.C (the Oppositions).

Observations

Observations are a form of intervention that take place with the filing by any party with a legitimate interest6 of an observation to the Italian Patent and Trademarks Office (IPTO), together with an indication of the grounds on which, in said party’s opinion, the application for registration of a particular trademark should be rejected. Observations aim at pointing out the existence of absolute impediments to registration (impedimenti assoluti alla registrazione), which arise from the lack of requirements that the law regards as essential.

In particular, an absolute impediment is deemed to exist when the trademark:

i) Cannot be depicted in graphical form7

ii) Belongs to the class of signs commonly used in the language or use of trade8

iii) Is contrary to public order and morality9 iv) Is exclusively composed of a generic name of products and services for which the trademark is being registered10

v) Is exclusively composed of logos or other emblems considered in the existing international conventions, or that are of public interest11

vi) Is deceptive12

vii) Is a collective trademark and is not accompanied by the regulation on its use13

viii) is a trademark of form and as such consists of a form that is both technically and aesthetically necessitated or made necessary by the nature of the product itself or by the function for which it is intended14.

Observations may be submitted at any time during the registration process15 and must contain an indication of the exact reasons for which the trademark should be refused registration. Observation may be submitted, as mentioned above, by any party with a legitimate interest — in particular, parties may be anyone in competition with the applicant for registration. In fact, the above-mentioned parties may have an interest in removing the obstacles that any registration of the trademark may cause to their business.

The IPTO examines the observations and, if deemed relevant and important, notifies the trademark applicant, who may submit its comments in writings, within 30 days from the date of receipt of the aforementioned notification. Said comments may attach any documentation deemed suitable by the trademark applicant to disprove the Observations that have been raised16. Failure by the trademark applicant to submit any comments does not, however, result in the automatic acceptance of the Observations and thus in the rejection of the petition for registration.

No further exchange of written documents is required, nor is an oral presentation by the litigating parties. The IPTO shall make a decision on the basis of the observations and deductions, if any, submitted by the trademark applicant.

Oppositions

Requirements to file an opposition

Oppositions aim at enforcing the so-called relative impediments to registration (impedimenti relativi alla registrazione), which are the obstacles that can only be detected by certain entities, namely, holders of prior rights that would be violated as a result of any registration of the trademark at issue17. Oppositions are only applicable to Italian trademark applications filed after May 1, 2011 as well as to international trademark18 applications published in the July issue of the Gazette de l’Organisation Mondiale de la Propriété Intellectuelle des Marques Internationales19 (the Gazette), and can be proposed20:

  • When the trademark for which the application is being submitted is identical or similar to a trademark already registered by others in Italy, or to a foreign trademark having effect in Italy21, according to an application filed at an earlier date (or taking effect at an earlier date under a priority22 right or a valid claim to seniority), provided that the earlier trademark is registered: (i) for identical goods or services, or (ii) for related products or services, where the similarity between the signs and identity or resemblance of the products or services may determine a likelihood of confusion for the public, which may also consist in a likelihood of association between the two signs23 .

In this regard, it is important to note that an Opposition may not be filed when the earlier trademark expired more than two years before (three if it is a collective trademark), or may be deemed revoked for non-use due to it not being used for at least five years24

  •  When there is no consensus by the people that have a claim on a name, a company name or a picture included in the trademark.

Consistently with the foregoing, the subjects entitled to file an Opposition25 are: (a) the holder of a trademark already registered in Italy, or having effect in Italy from an earlier date, (b) the holder of an application for trademark registration filed in Italy at an earlier date, or having effect in Italy at an earlier date by virtue of a right of priority or a valid claim to seniority, (c) the licensee of the exclusive use of the trademark and (d) persons whose names or portrait appear in the trademark, as well as institutions and associations whose names are included in the same26.

The terms and modalities for filing an Opposition

An Opposition, in order to be admissible, must be submitted in writing, substantiated and documented, within a term of three months from: (a) the date of publication in the Trademark Bulletin of the application for registration of the contested trademark, or from registration of a trademark the application of which has not been previously published27, or (b) in the case of an international trademark designating Italy, the first day of the month following the one in which the trademarks was published in the Gazette28.

An Opposition may only concern a single trademark application or registration, shall be admissible only if filed in Italian, and must contain, under penalty of inadmissibility, the following information: (a) as to the trademark towards which the Opposition is directed, the identification of the applicant, the number and date of the application for registration, the products and services protected by the trademark, and (b) as to the trademark or right of the opponent, the identification of the earlier trademark (and of the related products and services), or to the right to the name, portrait or the company name included in the trademark to which the Opposition relates29. The notice of Opposition must be prepared in accordance with a form attached to the Implementing Decree, and an original copy (with a revenue stamp of Euro 14.62) and three copies (one of which will be returned by the office as receipt) must filed with the IPTO. Alternatively, an original copy (with revenue stamp of Euro 14.62) and two copies can be sent by mail to the IPTO30. It may also be sent by electronic certified mail31. The opponent is also required to pay a fee of € 250.0032 on an account payable to the IPTO no. 35596006 (certificate of payment must be attached to the Opposition) 33. In the absence of that payment, the Opposition is deemed to have been withdrawn34.

Examination of the Opposition

In the presence of an Opposition, the IPTO35 examines, within two months from expiry of the term for filing the same, whether the Opposition is admissible36 and receivable37, and then notifies the subjects who submitted the trademark application (the Applicant), by also sending, to both the Applicant and the opponent (the Opponent), a series of additional information38. The parties are also notified of the possibility to reach an agreement within two months from the date of the aforementioned notification. The term may be extended upon joint request by both parties, up to a maximum of one year39.

Should this settlement agreement not be reached, the IPTO shall send to the Applicant all the documentation sent by the Opponent and grant the Applicant a 60 days-period, starting from the date of receipt of the notification, to file a written defense brief. Within the same deadline, in the event that the Opposition relates to a trademark that has been registered for five years or more, the Applicant may also request for the Opponent to provide documents proving that such trademark has actually been used, by the Opponent or with the latter’s consent, for the products and services for which it was registered or to offer valid reasons justifying the non-use of such trademark. If such evidence is not provided within 30 days, the Opposition shall be rejected40.

In addition to the above, the Opponent may also submit (within two months from expiry of the date by which a settlement may be reached), if it hasn’t already done so, some additional documentation41.

The IPTO, if it deems it necessary, may, within term set by the IPTO, ask the parties to provide further documents, arguments and comments relating to the allegations of the other party. Said communications are sent to both parties, and the IPTO may grant each party a proper term to answer.

Stay and extinction of the Opposition procedure

An Opposition procedure is stayed under certain circumstances, such as42: a) during the time limit granted to the parties for the purpose of reaching a settlement agreement; b) if opposition is based on a trademark application, until the registration of such trademark43; c) if opposition is based on an international trademark, until the expiry of the time limit for the refusal or the filing of an opposition against the registration of such international trademark before the WIPO, or the related examination or opposition procedures have been completed; d) if the opposition is proposed against a national trademark subject to re-examination following the filing of observations, until the end of the relevant re-examination procedure; e) if a proceeding for invalidity or revocation is pending against the trademark on which opposition is based, or which is relevant to the ownership of the right to registration44, until the judgment becomes final (provided that the applicant files an appropriate request for stay) and (f) as otherwise required by the Implementing Regulation45.

The opposition procedure is extinguished if: a) the trademark on which the opposition is based has been declared invalid or has been revoked through a final judgment; b) the parties have reached an agreement; c) the Opposition is withdrawn; d) the application, being the subject matter of the Opposition, is withdrawn or rejected through a definitive judgment; e) whoever filed the opposition ceased to be entitled to do so 46.

The decision on the Opposition

At the end of the proceedings, the IPTO either awards the Opposition and rejects the application for registration in whole or in part (depending on whether it appears that trademark cannot be registered for all or for just a part of the products and services mentioned in the application), or rejects the Opposition47. In the case of an Opposition concerning an international trademark designating Italy, IPTO shall also communicate its decision to the WIPO. The measure by which the IPTO shall declare the Opposition procedure unacceptable, inadmissible, or extinct or by which it awards, even in part, or rejects the Opposition is communicated to the parties, which, within two months from receipt of such communication may to appeal to the Board of Appeals of the IPTO48.