Published article on World Trademark Review (n.18 April/May 2009)


Trademark prosecution in Italy differs strikingly from most other systems. The process will significantly improve once the opposition system, set out in the Trademark Law of 1999, is finally implemented. Nonetheless, some improvements have already come into place
Trademark prosecution in Italy is not the easiest subject to discuss. The theory and the reality simply do not match. The Trademark Law, which was implemented in 1999, was reorganized in 2005 under the Italian Code of Industrial Property (Codice di Proprietà Industriale – hereafter referred to as the ‘CPI’). However, despite the enactment of a number of improvements at that time, modernization of the Italian system remains far from complete.
Nonetheless, this article gives us the opportunity to explain how some things are moving in the right direction. The new CPI brought in many innovations that have been successfully enacted by the Italian Trademark and Patent Office (Ufficio Italiano Brevetti e Marchi – hereafter referred to as the ‘UIBM’). Other vital changes may finally be on the way. An Implementing Regulation that will introduce opposition procedures in Italy for the first time and enact other important parts of the CPI is currently under discussion. Unfortunately, the Supreme Court for Administrative Law, which must approve the Implementing Regulation, has rejected the initial draft, requesting amendments and further explanation.
Procedures at the UIBM
Traditionally, and according to the CPI, trademark applications must be filed directly with the UIBM located in Rome or with the various Chambers of Commerce. The Chambers of Commerce, which are located in every province of Italy, forward applications on to the UIBM in Rome. In an important step forward for practice at the UIBM, an e-filing system was implemented in 2006. After some initial teething problems, the system now works fairly efficiently. The UIBM will carry out the following actions upon receipt of a trademark application:
It will first verify that the application complies with formal requirements (Article 148 of the CPI).
• Once the above criterion is satisfied, the office will proceed to examining the trademark on absolute grounds (pursuant to Articles 3, 7, 8, 9, 10, 12(1)(1), 13(1) and 14(1)(b) of the CPI). According to Article 173 of the CPI, the UIBM has to send a written communication to the applicant advising the latter of any issues raised on examination. The applicant must be given a term of at least two months (which can be extended) to reply. The UIBM can refuse an application (in part or in full) only after it has informed the applicant of its objections and has given the applicant the relevant time to reply. Decisions of the UIBM to refuse an application (in part or in full) may be appealed to the Commission of Appeal. The above procedure applies both to national applications and international registrations designating Italy under the Madrid System. However, to the best of our knowledge, at the time of writing, the UIBM has never issued a provisional refusal against an international registration designating Italy. Third parties are entitled to make observations on the registrability of a particular mark in the form of an official letter. Such observations may be filed within two months of the publication of the trademark and are evaluated by the UIBM. If the UIBM feels that they are relevant, it will communicate them to the applicant giving it a term of 30 days from the date of communication to file a reply. The UIBM is under no obligation to inform the person who filed the observations and this person has no right to appeal should the UIBM refuse to consider its observations. Italian law makes no provision for relative grounds examination. Pre-existing rights are brought to light only through opposition action or court proceedings. These issues are discussed in depth below.
(Non)publication of trademarks
According to Italian law, the prosecution phases described above should be completed by publication in the Trademarks Official Bulletin. Although regular publication of the bulletin is expressly provided for in the CPI, nothing has been circulated for decades. Notice of trademark applications may be obtained only through direct access of the UIBM’s databases in Rome or in each Chamber of Commerce. (At present, this is the sole way for trademark watch service providers and search companies in Italy to obtain their information.) One of the UIBM’s databases is also available online at This database and the UIBM’s website were updated recently and now provide far more information. However, rights holders should not rely on this database, as records relating to older marks or post-registration actions, such as assignments and changes of name, may not be accurate. The absence of publication of marks in Italy has the following consequences, among others:
• Applicants cannot be sure that the trademark has been examined and found admissible until the registration certificate has been issued (which currently can take up to four years due to the UIBM’s backlog).
• As the third-party observations noted above can be filed within two months of publication, but no publication in fact occurs, observations may be filed up until the prosecution procedure has finished.
• The absence of publication creates issues with respect to opposition proceedings.
Proposed opposition system
The CPI expressly provides for an opposition system for trademarks. This system was enacted by the legislature on 1999 and, according to Article 184, will be enforceable when the minister of productive activities issues the Implementing Regulation.
A draft of the Implementing Regulation has been ready for a while but the current wording was rejected by the Supreme Court for Administrative Law. Thus, there is no way of knowing when the Implementing Regulation will be enacted.
No details of the content of the draft Implementing Regulation have been announced. However, it is doubtful whether it will have any provisions relating to the publication of the Trademarks Official Bulletin. Such an omission would seriously limit the effectiveness of opposition proceedings. If such provisions are included they are likely to recommend online publication on the UIBM’s website instead of a paper bulletin.
The CPI sets out in detail how the opposition system will operate once it finally comes into effect (Articles 176 to 187 of the CPI). The proceedings seem to follow the Office for Harmonization in the Internal Market’s Community trademark opposition system and provide for the following:
• An opponent has three months from the publication of the application to file an opposition;
• There will be a ‘cooling off’ period of two months; and
• Applicants will be able to request that the opponent file proof of use of the relevant mark.
An opponent can file an action on the basis of not only prior trademark rights, but also prior rights relating to names and portraits.
International registrations designating Italy will be open to opposition action, although such marks will be published only in the World Intellectual Property Organization’s international gazette. The opposition period will commence on the first day of the month following publication.
Dealing with the lack of opposition
The above discussion, of course, suggests the following question: How can the owner of a prior right protect that right in Italy without recourse to opposition proceedings? As we have seen, the UIBM is not required to examine on relative grounds and the third-party observations procedure is hit and miss. The only remaining possibility is to entrust such protection to the Civil Courts.
The main method of enforcing rights against later marks is through a nullity action. Such actions may be taken against either a mark that has already been registered or, as is more usual, a mark that has not yet matured to registration. According to the CPI, “the decision may be given only after the UIBM has examined the application and it has to do so before any other application filed on a prior date” (Article 120(1)). In practical terms, the interested party may request the UIBM to take into consideration a certificate issued by the court which states that litigation is pending.
Bringing court action has some consequences in terms of costs. But the cost of Italian court proceedings is lower than in some countries (notably, the United States and the United Kingdom). Further, most disputes are settled before full judicial proceedings start.
Recordal of assignments
Amendments to the CPI enacted in 2005 brought changes to the regime for dealing with assignment of trademark rights. A request for recordal of an assignment must be accompanied by a certified copy of the deed amending or extinguishing rights in the mark. This can be an “abstract of the deed; or, in case of mergers, a certification issued by the company register or by other competent authority; or, in case of an assignment, a declaration of assignment or of effected assignment signed by the assignor and the assignee” indicating the rights that are subject of the assignment. The amendments to the CPI in this area have simplified the recordal of assignments and mergers, but many problems remain, especially for foreign deeds or more complex chains of assignment. Nonetheless, the UIBM has recently implemented the possibility of filing online requests for recordal. The systems are not yet fully functioning; however, when they become more reliable, they will decrease costs and expedite services.