an update on the recently introduced Italian opposition proceedings

1. TRADE MARK OPPOSITIONS IN ITALY
OVERVIEW
(also in comparison with CTM system)
Società Italiana Brevetti (“SIB”)
Roma, Firenze, Milano, Verona – www.sib.it

2. Some rough figures
Number of Italian TM applications published 26.559
as of Bulletin No of 11 July 2011, up till Bulletin No 9 of 8 March 2012
Number of Italian IR designations published 2.507
as of WIPO Gazette No 24 of 7 July 2011, up till WIPO Gazette No 7 of 8 March 2012
Number of published oppositions
till Bulletin No 9 of 8 March 2012 772
i.e. 3%
NB Informal, approximate n° of oppositions lodged on 8 March 2012 including unpublished ones 900
98% TMs (identical or LOC)
Oppositions grounds in % * of which 39% IT TM
*calculated on data of published oppositions 47% CTM
11% IR
2% : Other rights

3. Outline of Italian opposition proceedings
1. Trademarks subject to opposition:
• published Italian trademark applications filed as of 1
May 2011
• Italian designations of International trademarks
published on WIPO’s Gazette as of July 2011:
regardless of the date of their registration (or subsequent
designation)
P.S.: All classes immediately open to opposition

4. Outline of Italian opposition proceedings
2. Time limit:
• 3 months from publication in National Bulletin, or
• 3 months, commencing on the first day of the month
following publication in the WIPO Gazette (as of July
2011) – difference with CTM system!

5. Outline of Italian opposition proceedings
3. Grounds:
(iii) Identical or similar marks covering identical
or similar goods/services
(v) Certain specific names or signs failing prior
consent by the right owner to register them
as trademarks

6. Outline of Italian opposition proceedings
3. Grounds:
(iii) Prior identical or similar marks* covering identical or
similar goods/services: i.e.
- “Double identity”: identical signs and identical g/s; or
- LoC: identical or similar signs and identical or similar
g/s so as to cause a LoC on the part of the public (incl.
LoA)
* Earlier IT, CTM or IR designating Italy (TM registration or application)

7. Outline of Italian opposition proceedings
3. Grounds:
(ii) Certain specific names or signs failing prior consent
by the right owner to register them as trademarks: i.e.
- image rights,
- personal name other than the applicant’s name if its use in
the trademark may harm the reputation of the person entitled
to bear the name,
- well-known personal names,
- well-known signs used in the artistic, literary, scientific,
political or sporting fields,
- well-known denominations or initials or characteristic
emblems of events and of non-profit bodies.

8. Outline of Italian opposition proceedings
3. Grounds:
⇒ NO opposition can be filed on the basis of :
 unregistered rights or copyrights (except in the specific cases set
out above under (ii)),
 company names,
 domain names,
 reputation of an earlier mark registered or applied for dissimilar g/s,
 It is NOT possible for the owner to oppose against an application
filed by an agent or representative in its own name and without
owner’s consent.
In the absence of a voluntary cancellation, the only means of attacking on the above grounds remains
the filing of a cancellation action before the competent Italian IP court.
The same goes for obtaining the revocation (e.g. extinction of rights through non-use)

9. Outline of Italian opposition proceedings
4. Who may initiate an opposition:
• Owner (even if non recorded)
• Exclusive Licensee (unless license agreement
excludes it) – difference with CTM system!
(evidence to be filed within 2 months ̶ non extendable ̶
from expiry of cooling-off)

10. Outline of Italian opposition proceedings
5. Fees (amount- payment - refund) & apportionment of costs:
• Amount official fees: € 250 (+ € 34 if no general POA or POA
including lodging of oppositions already of record ) + stamp
fees
• Payment: to be paid prior to filing of opposition (failure of
attaching proof of payment leads to withdrawal)
• Refund: if, before the commencement of the adversarial part
of proceedings, the parties reach a settlement and the Office
is informed accordingly: refund official opposition fee
• Costs: in its decision rejecting or upholding the opposition,
the Office may award costs to the winning party of up to a
maximum of € 300 in professional fees and € 250 in official
opposition fees.

11. Outline of Italian opposition proceedings
6. Procedure:
the good and the bad sides

12. Outline of Italian opposition proceedings
6. Procedure: the good sides
• Cooling-off period: expires 2 months from notification of admissibility -
extendable upon joint request by the parties by up to a maximum of 12
months (>< OHIM’s 24 month maximum limit)
• Submission of supporting documents (registration certificates,
translations…): may be filed within 2 months (non extendable) from the expiry
of the cooling-off
• Defence of PoU: applicant may request PoU of any registration if granted ≥
5years - to be submitted within 60 days from notification to do so (on penalty
of the rejection of opposition) – term extendable upon request up to a
maximum of 6 months
• Decision must be issued within 24 months from date of lodging opposition
(without taking into account c-o period or period of suspension such as
opposition based on pending application/mark pending cancellation where
such suspension is requested by its owner)

13. Outline of Italian opposition proceedings
Differences with CTM system
6. Procedure:
the bad sides
• Limited grounds for opposition
• Inexperience of the Italian PTO

14. Recommendations for businesses
• Trademark watch service!
• Increased importance of registration in classes of current
and potential interest
• Exclusive licensees must make sure they have written
consent of licensor to lodge an opposition if their license
agreement does not specifically entitle them to do so.
Conversely, trademark owners that do not want their
exclusive licensees file oppositions, must make sure that
the license contract precludes it.
• Prior right holders intending to lodge an opposition on the
basis of a trademark subject to user requirements should
have sufficient evidence ready to prove genuine use

15. Additional issues
• Observations by third parties (no time limit, up till
registration of the mark)
• Geographical indications
• State Emblems, Official Hallmarks and Emblems of
Intergovernmental Organizations
• Provisional refusals IR: mandatory to appoint a
representative before the Italian PTO within non-
extendable term to obtain copy of the opposition notice
(penalty: final refusal)

16. Concluding remarks
• Welcome addition to the Italian legal system
• Means of exerting pressure, sometimes avoiding
expensive court proceedings
• Ideal and cost-effective resource for monitoring and
keeping (future) competitors at a distance
• Importance of assessment on a case by case basis
whether filing an opposition is the best option.

17. Società Italiana brevetti (“SIB”)
Offices
Rome Milan
E-mail: roma@sib.it E-mail: milano@sib.it
Phone: +39 06.69.54.41 Phone: +39 02.80.63.31
Florence Verona