A QUICK VIEW ON THE TRENDS

Two years ago, in May 2011, the Italian Patent and Trademark Office (IPTO) launched its long-awaited opposition system.

In the past, the Italian Patent and Trademark Office (IPTO) could hardly count itself among the world’s most efficient industrial property offices.

However the gap that separated it from other national offices in the European Union (and around the world) has largely been closed, albeit with a few exceptions.

All remedies available to rights holders and trademark applicants under the EU Trademarks Directive (89/104/EEC) are now in force in Italy.

Since May 2011, more than 2,400 oppositions have been filed against applications for Italian trademarks (and International Trademarks designating Italy). A good number of these oppositions have reached a negotiated settlement, while for many others a decision and, quite probably, a cooling off period is still pending.

A small number of cases (fewer than 40) have already been decided, allowing some trends to be identified in the otherwise uncharted territory of the IPTO practice (although obviously IPTO examiners draw heavily on the case-law of the OHIM, the ECJ and the Italian Courts).

The rules of procedure closely follow the Community trademark opposition procedure, allowing three months to file an opposition from the date of publication in the Italian Trademark Bulletin which is published online once a month.

Opposition may also be filed against International Trademarks designating Italy. In such cases, publication in the “Gazzette Mondiale de la proprieté intellectuelle de marques internationales” replaces publication in the Italian Trademark Bulletin, with the first day of the month following such publication marking the commencement of the term for filing an opposition.

Once an opposition is filed, the office assigns an opposition number, notifies the parties, and sets a period of two months for the settlement of the dispute (which can be extended for up to a maximum of one year).

Oppositions may be filed not only by owners of earlier trademarks but also by those having a right to a name and/or a portrait.

As already mentioned a two-month cooling off period (extendible up to 12 months) is provided to allow a possible settlement to be reached.

When the opposing mark has been registered for more than five years before the publication date of the opposed mark, it is usually appropriate for the counterpart to request proof of use of the opposing mark.

Once exchange of written pleadings has taken place, the case can be decided. According to the IP Code and Implementing Regulation, a decision should be issued within two years from the date of the filing of the opposition, but the term is not binding and it remains to be seen whether the IPTO will always be able to comply with such a deadline.

Communication with the office in the opposition proceedings is very efficient and simple since the IPTO allows use of certified email (PEC). Notice of opposition, including evidence of rights, power of attorney (NB: obligatory) and proof of payment of fees (€250 + €34) should be sent to the office within the prescribed terms in a single electronic folder attached to the certified email. The IPTO then replies, issuing the application number and proceeding to subsequent notifications by email.

Unlike the Community trademark opposition procedure, in Italy the opposition cannot be based on reputation of earlier trademarks, unregistered trademarks (which have their own specific status in Italy), company names, or designations of origin. In order to enforce such rights against a later trade mark, the owners still need to go through the courts, applying for a declaration of invalidity.

In this regard it is interesting to note that the criteria adopted by Italian Courts and IPTO are usually less stringent than those of the Office for Harmonisation in the Internal Market (OHIM) with regard to confusion or similarity between products and services. Therefore it could happen that in line with Italian standards, products and services may be considered confusingly similar in an opposition procedure even in the absence of a reputation claim.

The format of decisions issued to date, despite some differences between examiners, is modelled very closely on OHIM formats and decisions are well argued and articulated.

Even if It is too early to express a real opinion, the IPTO seems to be headed in the right direction and, with the exception of a handful of cases, the system seems effective, with most decisions following the OHIM’s precedents.

© BUGNION S.p.A. – July 2013