Administrative opposition procedure introduced

Italy

Regulation 33/2010, which implemented Legislative Decree 30/2005 (the Italian Industrial Property Code) and was adopted by the Italian Ministry of Economic Development, was published in the Official Gazette on March 9 2010. The regulation came into force on March 10 2010, exactly five years after the legislative decree was issued.

The main innovation is the introduction of an administrative opposition procedure for domestic trademark applications, which was already provided for by Articles 176 and following of the code.

The owner of a registered trademark may bring opposition proceedings where:

  • the trademark applied for is identical, or confusingly similar, to the registered trademark and covers identical or similar goods and/or services; or
  • the trademark applicant is not entitled to use names, portraits and well-known signs as trademarks (Article 8 of the code).

Clearly inspired by opposition proceedings at the European level, the Italian procedure operates as follows:

  • Opposition briefs may be filed with the Italian Trademark and Patent Office within three months of the publication of the trademark application in the Trademarks Bulletin (in print or online).
  • In order to be admissible, opposition briefs must contain a description of both the opposed trademark and the registered trademark, the name of the party filing the opposition and the relevant grounds of opposition. Once the admissibility of the opposition brief has been ascertained, the office will return the brief to the applicant and the parties will have a two-month period to reach a settlement agreement (the so-called 'cooling-off period').
  • If no settlement agreement is reached, the office will consider the merits of the opposition. During this phase, the office will examine the opposition grounds, and may ask the parties to provide documents and briefs containing their observations.
  • Pursuant to Article 56 of the regulation, the decision of the office shall be issued and communicated to the parties within a non-binding term of 24 months from the date of the filing of the opposition brief. The parties can appeal to the Commission of Appeals within 30 days of the communication of the decision.

Administrative opposition proceedings may either substitute or complement the filing of civil proceedings before the industrial property section of the Italian civil courts. However, the number of civil proceedings brought before the courts is likely to decrease, as Article 56 of the regulation:

  • establishes that the losing party will be condemned to pay all or part of the costs relating to the opposition proceedings; and
  • caps the maximum amount of legal costs to be reimbursed.   

Margherita Bariè and Pietro Pouchè, Carnelutti Studio Legale Associato, Milan

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