Published article on World Trademark Review (n.30 April/May, 2011)
The Italian Patent and Trademark Office (UIBM) can hardly count itself among the world’s most efficient
industrial property offices. However, recent developments show that it is taking steps in the right direction.
This is partly due to efforts made by the Italian legislature which, since 2005, has introduced a number of
measures aimed at reorganising the IP system, particularly in regard to the trademark system
New opposition system
Two significant regulatory measures came into force in 2010:
• on January 13 2010, the Implementing Regulation of the Industrial Property Code (Ministerial Decree 33/2010); and
• in August 2010, a decree amending the Industrial Property Code.
More so than the amending decree, the implementing regulation has had a major impact on the organisation of the UIBM and the development of trademark prosecution.
The Italian trademark prosecution system was the only system in Europe without an opposition procedure. The implementing regulation provided the last piece of the regulatory puzzle needed to redress this situation.
However, the situation is not yet resolved and the UIBM still has work to do. Although the 30 opposition examiners provided for under the decree seem to have been selected (but not yet appointed), no IP Bulletin in which to publish trademark applications has appeared as yet. Thus, it seems unlikely that the opposition system will be operational before the Summer 2011.
Even during the preparatory phase for the opposition system, the UIBM devoted considerable resources to clearing the examination backlog. At least until a couple of years ago, trademark registration in Italy rarely took less than three to four years.
However, the UIBM is currently examining applications filed in 2010 and has stated that as of February 2011, it will be turning its attention to 2011 applications. In the absence of an opposition system, this means that from now on, new trademarks should be registered in just a few months.
There are three main reasons behind this improvement:
• improved IT systems within the UIBM – although some work is still left to do;
• the use of part-time examiners in addition to the 15 full-time examiners dealing with absolute grounds; and
• the implementation of an automatic renewal system.
Applications for renewal of Italian trademarks are assigned new application numbers and, once registered, new registration numbers are assigned to renewals. Until quite recently this was not a mere formality: a new formal and substantial examination of renewal applications took place. Furthermore, until 2005 trademark legislation allowed for the possibility of altering trademarks at renewal, provided that this did not change their distinctive characters, meaning that an examination was necessary.
The UIBM has now put in place an automatic renewal system, allowing it to clear much of the renewal backlog – although the system of allocating new numbers on renewal remains. The system is not perfect, but huge progress has been made. In 2010 171,000 applications were processed, including 70,000 automatically processed renewals – a major increase on 2008, when around 80,000 registrations were processed.
The 2010 figures should also be considered in light of the annual volume of new applications: more than 54,000 in 2009 and more than 56,000 in 2010. The figures show that the current examination rate is in line with the level of demand from end users, which bodes well for the introduction of opposition proceedings.
However, a number of problems remain, including the significant issue of the relationship between the UIBM and the chambers of commerce, which by law hold delegated responsibility for receiving trademark applications and thus for managing contact between the UIBM and end users.
The IT systems used by the chambers of commerce have not been fully synchronized with the UIBM’s internal databases. Further, the database accessible to the public at www.uibm.gov.it is actually a third database which is periodically updated using the internal UIBM database. Although the reliability of the online database is much improved, doubts regarding its correlation with current data persist. In addition, registration applications for international trademarks in Italy are still handled almost entirely in hard copy.
The final performance-related question concerns the procedures for recordal of changes in ownership and changes of names and addresses. Considerable progress has been made thanks to the legislative reforms discussed above.
However, the UIBM system for registering changes of trademark ownership is among the most cumbersome in Europe.
More recently, this has had little to do with UIBM procedures, which have been greatly simplified, but is rather due to the wider legal framework in Italy which deals with contact with the public administration.
At present, recordal of assignment of a trademark with the UIBM involves a visit to the Public Registry Office and in many cases a further visit to a notary. The processing of applications for change of ownership is slow, with replies from the UIBM often taking one to two years. The situation would be greatly improved if simplification were to be introduced, as has already been done with regard to recordal of changes of company names and addresses, for which the UIBM no longer requires supporting documentation.
Types of trademark
As regards the types of trademark handled by the UIBM, the search engines currently available make it difficult to reach statistical conclusions. However, available data indicates that in 2009:
• 40.3% of trademarks filed were denominative trademarks;
• 51.1% were denominative and figurative (complex marks);
• 5.9% were denominative trademarks with stylised letters; and
• 2.7% were solely figurative trademarks and all other non-traditional marks (eg, shape marks, colour marks, sound marks).
In regard to classes of goods and services, there was a bias towards fashion and design, with the largest number of applications made for goods in Class 25 (18%), while the most popular class of service was Class 41 (16.1%).
Therefore, most of the UIBM’s work focuses on traditional trademarks, with little established practice in the non-conventional area. In the absence of UIBM public guidelines, its standard procedures can be deduced only from the decisions of the UIBM Board of Appeal, which should guide general procedures alongside national and EU case law.
To date, no olfactory trademarks have been registered; in Italy, as in the rest of Europe, a debate is underway as to how they might be represented effectively.
On the question of sound trademarks, there has been a noticeable increase in openness on the part of the UIBM, which is willing to accept them (dependent on their distinctiveness), subject to inclusion in the application of a musical notation and a sample recording. A key decision of the UIBM Board of Appeal declared admissible an application consisting of a single audio cassette containing a musical jingle “since the [UIBM] could, if required, have requested the applicant to transcribe the recorded sounds as musical notation prior to any refusal of the trademark, but this was not seen as necessary” (UIBM Board of Appeal, Decision 40/2001).
There are no well-established standard procedures regarding shape trademarks, although the UIBM is relatively conservative in this regard. The appeal board has provided guiding principles for some of its decisions, especially in regard to containers (ie, bottles). Italian case law would tend to refuse registration of shape trademarks when the shape contributes substantial value to the product. In Decision 10/2005 the board corrected a UIBM decision, refuting the notion that the container for a perfume can give substantial value to the product and stating that “it does not seem right to attribute to the container of a perfume characteristics and values above and beyond those intrinsic to the perfume, nor any additional function other than that of distinguishing the product”.
Still on the question of containers, in this instance for spirits, Decision 12/05 of the appeal board stated that: “in the spirits sector it is unthinkable that consumers would let their choice be guided by the aesthetic qualities of the bottle… In order to register the bottle in a valid manner it must be provided with elements not designed to give the product particular aesthetic qualities, but rather to provide it with distinctive capacity.”
There appear to be no decisions relating to shapes other than bottles. However, experience indicates the acceptance of shape trademarks that are “surprising” or that have become distinctive due to achievements in their field. The same applies to colour trademarks.
In the absence of acquired distinctiveness, the UIBM is reluctant to register pure colour or shape trademarks. In this regard, it should be noted that in accordance with applicable regulations (Article 13 of the implementing regulation), in Italy, claims for acquired distinctiveness and supporting evidence must be filed at the time of application (in contrast to, for example, Office for Harmonisation in the Internal Market procedures).
Nonetheless, containers stand out among the most notable Italian shape trademarks: the Bitter Campari bottle, the TicTac sweets box and the container with a handle for Merito ironing spray.
The UIBM is not just involved in registering trademarks, patents and other IP items. Indeed, since 2009 its official name has been the Anti-counterfeiting Directorate General. Within the institutional framework of the Ministry for Economic Development, this general directorship is charged with “recognising and protecting industrial property in order to support the fight against counterfeiting while sustaining innovation and competiveness within enterprises’.
The UIBM actively promotes anticounterfeiting measures and the protection of Italian-made products. However, for the moment its main area of operation continues to be patent and trademarkrelated activity, and it is hoped that this will continue to be the case. Indeed, in a country that is renowned for both its creativity and its counterfeiting, efficient policies for filing and protecting IP rights are desperately needed.