As from 01 July 2011, it will be possible for trade mark owners to file oppositions in Italy. Such oppositions will be available against Italian trade mark applications filed as of 01 May 2011 and International Registrations designating Italy, published in the WIPO Gazette as of July 2011. Oppositions will be filed with and handled by the Italian Patent and Trade Mark Office (the UIBM).
Such opposition proceedings can only be brought by certain earlier right holders, including owners of earlier registered or filed trade marks having effect in Italy, which are:
– either identical to the trade mark application opposed and designate identical goods and services; or
– identical or similar to the trade mark application opposed and designate identical or similar goods and services provided that there is a likelihood of confusion on the part of the public.
The opposition must be filed within a period of 3 months as from the publication of the trade mark application. Once the opposition is held to be admissible, there is a two-month cooling off period, intended to allow parties to find an amicable settlement. This cooling off period can be extended at the request of both parties up to a year.
If the parties fail to come to an amicable solution, the adversarial stage commences and the parties are given the opportunity to exchange their arguments. The applicant is given the opportunity to ask the opposing party to provide proof of use, if its earlier trade mark has been registered for more than five years on the date of publication of the trade mark application.
The UIBM must hand down a decision within a period of 24 months as from the filing of the opposition, either rejecting the opposition or accepting it in part or in full. It will be possible to appeal the UIBM’s decision within a period of 60 days.
The winning party may be awarded costs in accordance with a fixed schedule.
The introduction of opposition proceedings in Italy allows trade mark owners to deal with infringing trade mark applications on a cost efficient and relatively quick basis.
Trade mark owners are therefore well advised to put into place watch services in Italy so as to be able to react and if necessary file an opposition within the opposition deadline.