FAQs

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:

• proprietors of an earlier registered trade mark having validity in Italy (national, Community or international trade mark designating Italy);
• proprietors of an earlier registration application or one having effect in Italy from an earlier date on the strength of a priority right or a valid seniority claim;
• exclusive use licensees of an earlier trade mark.

In addition, in accordance with CPI Art. 8, parties who have claim to earlier rights on the following can legitimately resort to a procedure for opposition:

• names and/or pictures of persons;
• well-known signs used in the artistic, literary, scientific, political or sports fields;
• names, initials and emblems of non-profit events, organizations and associations.

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:

• for trade marks still in the application phase, three months from the date of publication of the registration application in the Trade Mark Bulletin published by the UIBM ("Bollettino dei marchi d’impresa");
• for trade marks subjected to rapid granting pursuant to CPI Art. 179, par. 2, three months from the date of publication of the registration in the Trade Mark Bulletin published by the UIBM;
• for international trade marks designating Italy, three months from the first day of month following that in which the registration was published in the “World Intellectual Property Organization International Trademark Bulletin”.

It is possible to file notice of opposition to the registration of:

• Italian national trade marks for which application has been made on or after 1st May 2011;
• international trade marks designating Italy whose registration has been published on or after the date of publication of the first bulletin of International Trade Marks (WIPO) of July 2011.

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:

• formal application checking phase and acceptance of the opposition;
• committal proceedings phase;
• decision-making phase.

During the first phase, the UIBM checks if the opposition notice has been submitted in compliance with all the formal requirements required by current legislation and decides whether opposition is admissible or not. Once accepted, the proprietor of the opposed trade mark is notified of the opposition, this action setting the start date of the committal proceedings phase and a period in which the parties can try to reach an out-of-court settlement to the dispute. This period is usually referred to as the “cooling off” period and has a minimum duration of two months, which can be extended up to a maximum of twelve months upon joint request from both parties. During the committal proceedings phase, the UIBM may also receive documentation provided by the parties to support their points of view. In particular, technical-legal memorials, inferences and, upon request by the proprietor of the opposed trade mark, also proof of use of the trade mark upon which opposition has been based in the case where it has been registered for over five years, can be furnished to the UIBM. If expressly requested, not submitting proof of use within the terms provided for by law results in the rejection of the opposition. Once the committal proceedings phase is completed, the UIBM has a period of 24 months, which can be extended in the case of suspensions or requests for further documentation, to carry out the decision-making phase, which can result in the total or partial upholding of the opposition and consequently at least the partial rejection of registration of the opposed trade mark, or the rejection of the opposition and consequent registration of the opposed trade mark.

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:

• The registration of a national trade mark cannot be opposed on the basis of an earlier right obtained through the use of an unregistered distinctive sign (common law trade mark). On the contrary, the OHIM accepts adequately extensive and documented prior use as grounds for valid opposition to the registration of a Community trade mark.
• The registration of a national trade mark cannot be opposed on the basis of a well-known trade mark pursuant to Art. 6-b of the Paris Convention.
• The UIBM only notifies the beginning of opposition proceedings to the proprietor of the opposed trade mark after checking the admissibility of the opposition. On the contrary, the OHIM immediately informs the parties involved when a notice of opposition to the registration of a Community trade mark is filed.

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.

• Opposition is an administrative procedure and is therefore quicker and less expensive than legal procedures, which have been needed up till now to obtain the annulment of someone else’s trade mark;
• Opposition allows counterfeiting to be prevented as it can be brought against trade marks in the process of registration and therefore usually not yet present on the market;
• Once upheld, the fees and representation costs sustained in the course of the opposition proceedings can be at least partially reimbursed.

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:

• perform a trade mark search before proceeding with the registration of a new trade mark.
• register the distinctive signs used, in order to acquire the right to oppose the registration of trade marks identical or similar to yours.
• activate a monitoring service on your trade marks so that you are able to promptly initiate within the tight time limits set by current regulations.
• file documentation attesting the use of your trade marks, so as to be able to exhibit proof of use of your registered distinctive signs during opposition proceedings.