Trademarks, Brands, Patents, Designs, Made in Italy, Copyrights, Competition Law, Contracts and Enforcement

11 luglio 2011

New trademark opposition procedure in Italy

Giovanni Orsoni

On 11 July 2011 the Italian Patent and Trademark Office (UIBM), published on its website the first Italian Trademark Bulletin. The current issue (“Bollettino N.1 del 11 luglio 2011”) can be found in PDF format at

The publication of the online Bulletin, which from now on will be released monthly, is one of the final implementation steps of the new “opposition” system for Italian trademarks, as provided for by Articles 174 to 184 of the Italian Industrial Property Code, implemented by a set of subsequent decrees (the Ministerial Decree no. 33/2010 of 13 January 2010, the Legislative Decree no. 131/2010 of 13 August 2010, and finally the Ministerial Decree of 11 May 2011).

The opposition procedure before the Italian PTO has been now introduced for the first time in Italy and has been designed along the lines of the opposition proceedings before the OHIM (the European trade marks and designs office), albeit with some differences.

This first issue of the Bulletin contains a list of the marks filed in Italy after 2 May 2011 and up to 8 June 2011, together with their (eventual) graphical representation, the owner’s name and the designated lists of goods and/or services.

These filings can be opposed until three months after the publication of each bulletin, i.e. in this case until 11 October 2011.

Similarly, International trademarks applications designating Italy and published in the WIPO Gazette as of July 2011 may be opposed within three months from the first day of the month subsequent to their publication, i.e. in this case before 1 November 2011.

The grounds to oppose a filing are strictly listed by law. Oppositions can be filed based on:

- Earlier trademark registrations or applications in force in Italy that are either a) identical to the trademark in the application to be opposed and covering identical goods/services, or b) identical or similar to the trademark in the application to be opposed and covering identical or similar goods/services when there exists a likelihood of confusion on the part of the public;

- Well-known personal names, signs used in artistic, literary, scientific, political or sports fields, denominations and abbreviations of exhibitions or events and of non-profit bodies or associations and their emblems;

- Personal names if the use of the trademark in the opposed application can be detrimental to the reputation, credit or dignity of the person entitled to the name;

- Image rights if the trademark in the application to be opposed consists of a portrait of a person.

Any other right (i.e. unregistered trademarks, domain names, company names, copyright, an earlier trademark for dissimilar goods/services) may be asserted only in ordinary invalidity proceedings before the Italian Courts.

Even for the mentioned allowed grounds, the opposition procedure is not mandatory and proceedings can always be brought before the Courts. The opposition procedure is however expected to be quicker and more cost effective.

A fee of 250 euros must be paid prior to the filing of the opposition, and the procedure timetable will be as follows: 1) two months from the filing of the opposition for the Office to decide on its admissibility; 2) a cooling-off period of further two months for the parties to find an amicable solution (extendable up to one year on joint request); 3) beginning of the proceedings. A decision shall be rendered within twenty-four months from the opposition date.

The decision of the Office on the opposition can be appealed before a designated Board of Appeal (“Commissione dei Ricorsi”) within 60 days from the notice of the decision. A further appeal (exclusively on points of law) can be brought to the Supreme Court (“Corte di Cassazione”).

From a practical standpoint, the surveillance system our firm keeps in place to monitor later filings gains today a new and more up-to-date tool, to give our clients who opted-in to the service a timely report on interfering filings and to evaluate together the opportunity to oppose them.

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