Italy adopts the new administrative procedure for invalidation and revocation of trademarks, in force from december 29, 2022

INTRODUCTION
The Decree of the Ministry of Economic Development of 19 July 2022, n. 180, amending the Italian Industrial Property Code to introduce administrative proceedings for invalidation and revocation of registered trademarks before the Italian Patent and Trademark Office (IPTO), was published on November 29, 2022.

As from 29 December 2022, it will be possible to file an action for invalidity and revocation against registered Italian trademarks before the IPTO through an administrative procedure.

Until now, Italy was one of the few countries in the European Union where no administrative procedure was available for trademark invalidation and revocation actions. Such actions could only be filed before the ordinary courts.

These administrative proceedings represent an additional tool for trademark owners who may choose to file an invalidity or revocation action through administrative proceedings or before the ordinary courts. Court proceedings remain available as an alternative, even though more expensive, route.

 

GROUNDS TO FILE AN INVALIDITY ACTION 
The invalidity action may be filed against registered Italian trademarks on the basis of absolute grounds or relative grounds.

An absolute ground action can be filed in the following cases:

  • trademarks which are devoid of distinctive character;
  • deceptive trademarks;
  • trademarks excluded from registration in accordance with the legislation of the European Union, or of the State, or of relevant international agreements to which the European Union or the State is a party, relating to the protection of PDOs and GIs, traditional terms for wines, traditional specialities guaranteed, plant variety names.

A relative ground action can be filed in case of trademarks:

  • identical or similar to a trademark already registered by a third party for identical or similar goods/services if, due to the identity/similarity of the signs and the identity/similarity of the goods/services, there exists a likelihood of confusion which may also consist of a likelihood of association;
  • identical or similar to a trademark already registered by a third party for identical or similar or even not similar goods/services, where the earlier trademark has a reputation and where the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark;
  • identical or similar to a trademark already well-known within the meaning of Article 6bis of the Paris Convention;
  • filed by the agent/representative of the trademark owner without his consent or justifiable reasons.

The invalidity action cannot be based on signs used in the course of trade or on other prior rights such as for example right to a name, image, copyright.

Bad faith is also excluded as a ground for the administrative proceedings, while it will of course continue to be a ground for legal action.

 

GROUNDS TO FILE A REVOCATION ACTION
The revocation proceedings can be filed before the IPTO against Italian registered trademarks on the basis of the following grounds:

  • lack of use;
  • trademark becoming a common name in the trade;
  • trademark becoming misleading.

 

INVALIDITY AND REVOCATION PROCEEDINGS
The application for invalidation or revocation must concern only one trademark and may be filed on the basis of one or more earlier rights as long as they belong to the same owner. The application shall contain all arguments and evidence since filing further documents at a later stage is not allowed.

Upon receipt of the application for invalidity or revocation action and having verified the formalities and payment of the fee, the IPTO sends to both parties a communication in which it grants an initial period of two months to try to reach an amicable settlement. This period may be extended by a joint request of the parties. In the absence of an agreement, the owner of the contested trademark will have a further period of sixty days to file observations and, where applicable (in case of invalidation actions based on relative grounds), to file any request for proof of use. After the expiry of the above deadline, if the owner of the contested trademark files observations and a request for proof of use, if any, the Office will send them to the trademark owner, granting sixty days to reply; after this period has elapsed, the IPTO grants to the contested trademark owner a further deadline of sixty days to file counterclaims. If, however, the trademark owner does not file observations, the Office will proceed with the decision.

The decision can be appealed before the Board of Appeal.

 

TERM FOR THE DECISION
The duration of the proceedings is 24 months (if no suspension periods are required).

 

ADVANTAGES OF THE NEW PROCEDURE
The new procedure, in our view, has many advantages over a lawsuit before the court:
– the decision (if no suspension period is required) is issued in a relative short time limit;
– the proceeding is less expensive than an ordinary lawsuit.

In addition, the new procedure is a valid alternative for trademark owners that fail to file opposition against an Italian application and now they have the opportunity to file an invalidation action through an administrative procedure.

 

TIPS FOR CLIENTS
The invalidity and revocation actions may be a valid tool to remove trademarks which constitute an obstacle to the registration or use of a trademark of interest.

On the other hand, it is increasingly important to:
– constantly review the trademarks portfolio in order to evaluate whether to proceed with the application for trademarks used in commerce but not yet protected by registration;
– to keep the evidence of use (e.g. invoices, samples, catalogues, accounting documents) of trademarks in the event of a revocation action or if such evidence is required in the course of opposition or invalidation proceedings.

We will be happy to assist you in the new invalidation and revocation proceedings and to address any concern you may have.

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