Trademark Opposition Proceedings in Italy
Indeed, the opposition proceedings before the IPTO (Italian Patents and Trademarks Office) is an autonomous procedure other than the judicial one, which is structured in a similar way as the parallel opposition proceedings before the EUIPO (European Intellectual Property Office). However, the latter is competent to settle disputes between TM owners in the EU at an administrative level.
The aim of the opposition is to decide whether the subsequent trademark application can be registered or not, thus allowing to obtain its refusal through a much simpler and certainly much cheaper procedure than a nullity action of a registered trademark before ordinary courts.
Once the application is received and the examination of possible absolute grounds for rejection – which might cause its refusal ex officio – is completed, the Office proceeds with the publication of the alleged registrable application in the Official Bulletin. The Office establishes a term of three months starting from the publication date – a peremptory and non-extendable deadline – in order for third parties which own earlier trademarks to promptly file an opposition with the aim of preventing its registration.
For Italian designations of international registrations, the three-months term starts from the first day of the month following the publication of the International registration in the World Intellectual Property Organization Gazette.
- Grounds for Opposition
With the administrative opposition, it is possible to enforce the so-called relative grounds of refusal of the registration (corresponding to the relative grounds for invalidity) – explained in detail in Article 12, clause 1, letters c), d), e) and f), and in Article 14, clause 1, letter c-bis) – for all or some goods or services the registration was applied for, and the lack of consent to registration by the entitled subjects according to Article 8 of IPC, that is to say:
- Existence of an earlier application/registration effective in Italy concerning an identical trademark for identical goods or services;
- Existence of an earlier application/registration effective in Italy concerning an identical or similar trademark for identical or similar goods or services, if because of the identity or similarity between the signs and between the goods or services, there exists a likelihood of confusion on public also consisting in a likelihood of association between two signs;
- Existence of an earlier application/registration effective in Italy concerning an identical or similar trademark for identical goods or services, either similar or not, when the earlier trademark has a reputation in the EU or in the country and the use of the subsequent one without due cause would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trademark. The same principle applies – under the same conditions – also to cases in which the earlier trademark is well-known according to Paris Convention for the Protection of Industrial Property.
- Existence of a designation of origin or a geographical indication, acknowledged by the Italian and European law or in compliance with international agreements which the EU or Italy belong to.
- Lack of consent to registration by the owners of portraits, names and well-known signs.
Therefore, it is not possible to file an opposition claiming that there are rights arising from the use of the trademark or regarding the use by a company name, commercial sign or domain name.
- Subjects entitled to file oppositions
Subjects entitled to file oppositions are defined by Article 177 of the Industrial Property Code, as follows:
- the owner of a trademark which was already registered in the country or was effective in the country as from an earlier date;
- the subject who filed a trademark application in the country on an earlier date or which was effective in the country from an earlier date, pursuant to a priority right or a valid seniority claim;
- the licensee for the exclusive use of the trademark;
- subjects, bodies and associations entitled of the rights on portraits, names and well-known signs;
- subjects who are legitimate to protect the rights conferred by a designation of origin or a geographical indication;
- the subject who filed an application for a designation of origin or a geographical indication, which is not yet granted when the opposition is filed.
- Main procedural steps: from the start to the decision
Once it is confirmed that the opposition petition can be received and is grounded, the Office allows the parties a term of two months, possibly extendable, in order to evaluate whether there is any room and willingness to come to a settlement agreement and negotiate a conclusion to the opposition.
If no agreement is reached, then the pleadings stage starts with the filing of arguments presented by both parties to support the opposition and reply to the same.
In this stage, the applicant has the right to ask the opponent to prove the use of its earlier trademark (as long as it is was registered at least 5 years before) during the five years preceding the filing date (or priority date) of the opposed application.
In case no proper evidences are filed in order to prove the effective use of the earlier trademark for the goods and services which it was registered for, and representing the ground for the opposition, or there isn’t any legitimate reason for the lack of its use, the opposition is automatically rejected by the Office with no need to be further discussed.
The opposition proceedings are concluded with a decision of acceptance or refusal (total or partial) pronounced by the Office within two years from the beginning of the proceedings.
The losing party can appeal such decision before the Board of Appeal. Moreover, it is possible to further appeal the second instance decision before the Supreme Court of Appeal.
- How to prepare effective moves to win oppositions
Therefore, before initiating an opposition proceedings it is important to make sure:
- to own earlier rights enforceable during the opposition proceedings; the “most effective” earlier right can be defined usually as the most similar sign covering the wider range of goods and services and/or the right covering the more similar goods and services;
- to be entitled subjects to start the action, making sure to possibly update the ownership of the earlier right, by recording beforehand any possible change occurred;
- to own a valid trademark which can be effectively enforceable and it is not vulnerable due to potential non-use and, if it is actually used, to collect all the relevant documentation to prove the effective use of the trademark in the territory and in the period concerned;
- that the owner of the opposed application is not, on his/her side, owner of earlier rights, by conducting some searches in the databases of all valid trademarks in our country.
Lastly, in order to benefit from this useful and quick administrative tool, it is highly advisable to activate a surveillance service at least on the most relevant trademarks, so that the publication of third parties’ trademarks potentially conflicting is promptly notified, thus allowing the owner of earlier trademarks to file an opposition within the provided peremptory term.