This article first appeared in World Trademark Review Daily
With Ministerial Decree No 180/2022, which entered into force on 29 December 2022, the Italian government has introducedthe possibility of fi ling revocation and invalidity actions before the Italian Patent and Trademark Offi ce (PTO) and completed thetransposition of Article 54 of Directive 2015/2436, thereby allowing the fi ling of cancellation actions both in court and beforethe PTO via an administrative procedure.
Grounds for filing revocation and invalidity actions
Actions for a declaration of revocation of a trademark may be fi led in the following cases:
- the trademark has become liable of misleading the public;
- the trademark has become a common (generic) name; and
- the trademark has not been put into genuine use within the period of fi ve years following registration.
A declaration of invalidity of a registered mark may be requested on absolute grounds by any “interested party” where aregistered mark is deemed to:
- be devoid of distinctive character;
- be unlawful (eg, contrary to law, public order or morality);
- consist of an emblem protected by international conventions or a sign containing a symbol of public interest, unless suchregistration has been authorised by the competent authority; and
- be excluded from registration in accordance with legislation or international agreements on the protection of designations oforigin, protected geographical indications, traditional terms forwines, traditional specialties guaranteed or denominations of plant variety.
A declaration of invalidity of a registered mark may be requested based on third-party earlier rights (relative grounds) by theproprietor of the earlier mark or protected sign where the registered mark is deemed to:
- be identical to a mark that is valid in Italy for identical goods or services;
- be identical or similar to a mark that is valid in Italy, if a likelihood of confusion arises on the part of the public;
- be identical or similar to a mark that is valid in Italy for identical, similar or dissimilar goods or services, where the earlier markenjoys a reputation in the European Union or in Italy, and the use of the later mark would take advantage of, or be detrimentalto, the distinctive character or reputation of the earlier mark;
- be identical or similar to a mark that is well known in a member state pursuant to Article 6 bis of the Paris Convention; and
- have been fi led by the agent or representative of the owner without its consent or without due cause.
Further grounds for bringing cancellation actions in court (eg, right to name or portrait, and earlier unregistered marks) have notbeen extended to administrative actions (the competent authority for these cases remains the Civil Court).
After examining the admissibility of an application (the formality and basic requirements are checked at the time of fi ling), thePTO will grant the parties a two-month ‘cooling-off’ period (extendable by up to one year) to seek an amicable solution. If noagreement is reached, the owner of the contested mark will have 60 days to fi le its observations in reply to the applicant’sgrounds or to request proof of use of the earlier mark (if applicable). If such request is fi led, the applicant will have 60 days topresent proof of genuine use.
After such exchange, the PTO will issue its decision. Decisions may be appealed before the Board of Appeals and, eventually,the Supreme Court (Corte di Cassazione).
The phases of these proceedings clearly refl ect the opposition procedure that is already in force; however, an applicant mustpresent its grounds with all the other documents required by law (eg, the power of attorney) at the time of fi ling, since the latefi ling of documents is not allowed. The offi cial fee for fi ling the abovementioned actions is €500.
Administrative cancellation actions have advantages for the protection of trademark rights compared to judicial actions, in termsof the increased speed of the proceedings and the lower costs involved; it will also help to decrease the judicial backlog of theItalian courts. In some cases, however, the litigation route remains preferable (eg, for counterclaims).
Nonetheless, the easier accessibility of such actions will clearly put a greater responsibility on Italian trademark owners, whomust now take into account that their registered trademarks may be invalidated more easily.
Further, as the PTO has been lax in granting borderline descriptive marks, it is advisable to evaluate the risks of counterclaimsfor revocation before proceeding with the enforcement of weak marks.
Finally, it is noteworthy that the PTO does not conduct a substantive novelty examination and that the opposition procedure israther recent in Italy. For these reasons, the Italian trademark register is still crowded with similar or even identical trademarks.The new procedure, however, will allow to remove from the register those trademarks that undermine the distinctiveness ofothers.