Italian opposition proceedings: from utopia to reality

Five years after the adoption of Legislative Decree 30/2005, which introduced the Code of Industrial Property, Regulation 33/2010 was adopted and entered into force on 10th March 2010.

Among other amendments and innovations, Articles 46 to 63 of the regulation provide for opposition proceedings as set forth in Articles 176 and following of the code.

The utopia
Since the publication of the Code of Industrial Property, opposition proceedings have long been awaited as administrative procedures to be used by trademark owners in order to prevent the registration of identical or confusingly similar trademarks. However, the implementing rules were not adopted until the publication of Regulation 33/2010.

Under the code, any objection to an Italian trademark application or an Italian designation of an international registration must be raised by bringing an invalidity action before the Italian specialist courts. 

At best, first instance proceedings on the merits take between 12 and 18 months; however, in most cases it takes two to three years for a decision to be issued and the legal costs are typically higher than those for opposition proceedings.

Italy is unfortunate to be known for the “Italian torpedo effect”, which is used as a way of delaying proceedings by taking advantage of the lengthy timeframe of civil litigation. This legal loophole has been exploited to produce distorted behaviours. For example, IP owners tended to tolerate the existence of confusingly similar or even identical trademarks. As the Italian Patent and Trademark Office does not examine applications for novelty, if a subsequent application is not voluntarily withdrawn, an invalidity action is the only remedy. Thus, the coexistence of marks became a necessity - to the detriment of consumers’ interests.

In addition, Italy has often been selected as the country of origin for international registrations by applicants having a connection through establishment, domicile or nationality in order to prevent a “central attack” (ie, the defeat of the registration for all designated countries by means of a single invalidation or revocation action against the basic registration). 

As a result, the new opposition proceedings have been eagerly awaited and Regulation 33/2010 appears to have turned the utopia into a reality.

Implementing regulation
The new proceedings generally follow those before the Office for Harmonisation in the Internal Market. An opposition may be filed in Italy by the owner or exclusive licensee of a prior trademark registration or application only against an identical or similar trademark in respect of the same or similar goods or services.

Moreover, oppositions may be filed by the persons, entities and associations mentioned in Article 8 of the Code of Industrial Property. That article regulates the registration as trademarks of names or signs corresponding to or including names, portraits and well-known signs.

Prior rights such as unregistered trademarks, company names or domains cannot be enforced within oppositions, but may be claimed only in an invalidation action before courts, as well as claims of extended protection for well-known or famous marks.

As a result, owners of IP rights other than trademarks must still accept coexistence with identical or confusingly similar trademarks if they cannot afford the costs and time involved in civil actions.

The reality
In principle, opposition proceedings will permit the more efficient protection of trademarks, and thus of owners’ and consumers’ interests, by avoiding civil actions. However, in practice, the procedure cannot yet be used and is unlikely to be available during 2010 for a variety of reasons, including the following:

  • Bulletins for the publication of Italian applications have not been issued. 
  • The official fees have not been established.
  • The forms for filing a petition have not been created.
  • The examiner training has not been completed.

Oppositions will certainly offer trademark owners a cheaper and presumably faster alternative to court actions, which have so far been the only instrument to enforce trademark rights in Italy to prevent registration of potentially conflicting trademarks. Nonetheless, Italian opposition proceedings still appear to be more of a utopian vision than a reality. 

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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