The procedure for opposition against the registration of a national trade mark is an administrative proceeding that are conducted before the Italian Patent and Trade Mark Office (Ufficio Italiano Brevetti e Marchi - UIBM) and that, in the presence of certain prerequisites, allow obtaining the refusal to grant an Italian trade mark or an international trade mark designating Italy. Trade mark procedure for opposition was formally introduced in Italy in 2005 with Legislative Decree No. 30 concerning the new Industrial Property Code (Codice della Proprietà Industriale - CPI), but only became operative in July 2011 following publication by UIBM of the bulletin (pursuant to Art. 187 of CPI) listing the filed registration applications and the granting of new national and international trade marks designating Italy.
It is possible to oppose the registration of a distinctive sign as a national trade mark if this distinctive sign conflicts with an earlier right you have that is enforceable in Italy. In particular, this earlier right can derive from a registration application or the granting of an Italian national trade mark, a Community trade mark or international trade mark designating Italy. Therefore, it is only possible to resort to a procedure for opposition when the distinctive sign for which it is wished to prevent registration can be confused, in identity or by similarity, with a trade mark you have that is registered or in the course of being registered.
Opposition to the registration of a distinctive sign as a national trade mark can only be filed on the strength of a right acquired before the filing of the registration application for the distinctive sign in question. Therefore, in accordance with CPI Art. 177, the following can legitimately resort to a procedure for opposition:
It is possible to validly file a notice of opposition to the registration of a national trade mark by applying to the UIBM within the following time limits:
It is possible to file notice of opposition to the registration of:
Yes, it is possible to oppose just part of the goods and services for which the opposed trade mark has been registered or is in the course of being registered. To this end, it is sufficient to indicate in the opposition notice submitted to the UIBM the list of goods and services for which registration of the trade mark is opposed.
Opposition proceedings against the registration of a national trade mark are organized into three successive phases:
Yes, on condition that action is taken within thirty days from receiving the notification in which the UIBM expresses itself on the inadmissibility or rejection of the opposition. To that end, it is necessary to lodge an appeal with the UIBM Appeal Commission according to the procedures provided for in CPI Art. 135. Any appeal temporarily suspends the effect of the UIBM decisions that have been challenged.
Starting opposition proceedings requires paying an opposition fee of € 250. To this charge, provided for by current legislation, you should add any representation costs in the case where an accredited agent pursuant to CPI Art. 201 is needed.
In cases where the opposition is upheld, the losing party can be sentenced to reimburse the opponent for the opposition fee of € 250 and the expenses of representation sustained up to a maximum of € 300.
National opposition proceedings, which are carried out before the UIBM, have been developed along the lines of opposition proceedings against the registration of Community trade marks carried out before the Office for Harmonization in the Internal Market (OHIM). Nevertheless, the two procedures have some substantial and also procedural differences:
In light of the legislation currently in force in Italy, it is not possible to commence opposition proceedings against the registration of a national trade mark on the basis of the prior use of an unregistered distinctive sign (common law trade mark). The distinctive signs indicated in CPI Art. 8 and in particular the names and/or pictures of persons and well-known signs used in the artistic, literary, scientific, political or sports fields are an exception.
In order to be considered admissible, a procedure for opposition must be started within the time limits provided for in the Industrial Property Code (see above), which cannot be extended. Thus, activating a monitoring service that allows immediately indentifying any attempt to register distinctive signs that infringe your trade marks becomes necessary in order to promptly start a procedure for opposition. The monitoring of your trade marks is therefore a fundamental activity both for promptly identifying attempts to infringe exclusive rights to your trade marks and for fully exploiting the possibilities of protection made available by opposition proceedings before the UIBM.
The introduction of procedure for opposition against the registration of national trade marks provides a new and effective tool for protecting exclusive use rights of distinctive signs. It is advisable to bear in mind that this tool could also be used by other operators in your economic sector of reference, who could thus obstruct the registration of trade marks you are interested in. Performing a search prior to filing a new registration application allows identifying earlier trade marks likely to be confused with the distinctive sign that it is wished to register and therefore enables interference with the earlier rights of others to be avoided. By checking the novelty requirement through a trade mark search it is therefore possible to minimize the risk of opposition proceedings being taken against the registration of your trade marks.
Following procedure for opposition against the registration of national trade marks coming into force, it is advisable to: