The procedure for the opposition to registration of trade marks in Italy, eagerly awaited, is finally in force.
The procedure applies to applications for registration of trade marks filed in Italy as of 1 May 2011 and international trade marks published in the first issue of the July 2011 WIPO (World Intellectual Property Organisation) Gazette of International Marks.
The procedure
Opposition to Italian trade marks may be filed within three months of the publication of the application for registration in the Official Bulletin of trade marks, as of the month of July 2011. For international trade marks extended to Italy, the term is three months as of the first day of the month following the month in which the international mark was published in the WIPO Gazette.
The opposition must be filed with the Italian Patent and Trade Mark Office (Ufficio Italiano Brevetti e Marchi – UIBM) in writing, with grounds and supporting documentation. Legitimate opponents include: owners of earlier trade marks registered in the state or having effect within the state; applicants filing applications within the state for registration of trade marks on earlier dates, or having effect within the state on earlier dates by virtue of priority rights or valid seniority claims; holders of exclusive licences to use of the trade mark; persons, entities and associations under Article 8 (rights holders of persons’ portraits, names, well-known signs).
As with the Community opposition procedure, a two-month period is provided for to allow the parties to reach a settlement agreement, which may be extended by common request of the parties. If an agreement is not reached, the trade mark applicant may present its case in writing within a term set by the UIBM. In accordance with Article 178(4), at the request of the applicant, opponents holding previous trade marks registered for at least five years are obliged to provide evidence of the effective use of such trade marks, or face rejection of opposition.
At the end of the opposition procedure, the UIBM admits the opposition, refusing the trade mark application in all or in part where the trademark cannot be registered for any or for only some of the goods and services listed in the application; otherwise opposition is rejected. Article 182 states that “the measure used by the UIBM to declare opposition inadmissible or to reject opposition is notified to the parties, who have 60 days as of the date of notification to file an appeal with the Board of Appeal”. Decisions of the Board of Appeal may in turn be appealed with the Supreme Court.
Advantages
Owners of trade marks will no longer be forced to turn to the civil courts in order to protect them but may instead take advantage of an administrative opposition procedure that is speedier and cheaper than a court application for invalidity.
Suggestions
Opposition may be based on prior filed or registered trade marks but not unregistered trade marks; prompt filing is thus advisable of all trade marks to date held only by virtue of use. It is also advisable to put in place a monitoring service to identify third-party trade marks that might potentially interfere with owned trade marks and to file opposition. It is also advisable to keep all the supporting documentation attesting the effective use of owned trade marks, as this might be requested during an opposition procedure.
Source: Rapisardi Intellectual Property
