http://www.uibm.gov.it/index.php/marchi/opposizione-alla-registrazione

Objecting to the registration of trademarks

Once registered your own trademark, ensure that no one uses or imitates it for identical or similar products/services, without authorisation. To oppose any imitations or forgeries, the first form of protection is to use the objection procedure towards the registration of an identical or similar trademark by other parties.
The procedure was activated in July 2011, following the publication of the Ministerial Decree 11 May 2011 and of the Explanatory circular no. 582. According to which, with regard to applications for national trademarks filed in Italy, the owners of prior rights in conflict with third party custodians of a similar brand, may oppose the new registration by means of administrative action.
This system represents a valid and effective alternative to the ordinary legal procedure, with significantly lower costs and times (even if it is always possible to request the nullity of a trademark through the stated legal procedure).

Filing the deed

The objection must be filed within three months:

  • from the date of publication, on the official gazette of company trademarks, of an application for registration considered recordable
  • from the date of publication, on the said official gazette, of registration of a trademark, the application of which has not been published (art. 179, c. 2 of IPC)
  • from the first day of the month following that of the occurred publication of the international trademark in the Work Intellectual Property Organisation of International Trademarks Gazette.

The deed of opposition to registration of a trademark must be filed using the specific form available on-line (together with the instructions for its compilation), also at the IPTO's Public Enquiry Centre.
The form, written in Italian by the entitled person, as owner of a right or of a prior trademark, must indicate the reasons for the objection, namely:

  • if the objection is based on art. 8 of IPC (prior rights), indicate precisely the right of the opposing party, its legitimacy and an explanation of the grounds for objection
  • if the objection is based on art. 12, comma 1, lett. c) and d) of IPC (prior trademark) indicate precisely: the type of trademark on which the objection is made (national, EU, international); the details of the trademark (if already registered) or of the relative application for registration (already filed but still under examination); the type of trademark (name, figurative or other); the products/services on which the objection is based; the legitimacy of the opposing party and an explanation of the grounds for objection; it is also necessary to attach a copy of the publication of the application or prior registration or add the copy of the trademark.

The form must be signed by the opposing party or by its representative (agent/lawyer). The appointment of the representative, domiciled in Italy, is mandatory if the opposing party is established abroad.

However, the following must be attached to the form:

  • a copy of the publication or reproduction of the trademark against which the objection is made (coloured if the requesting party claims one or more colours as a distinctive element)

 

  • statement of the prescribed rights: for each notice of objection, fees equal to 250.00 Euro must be paid on postal c/a no. 668004 payable to the Agenzia delle Entrate - Centro Operativo di Pescara. It is not possible to pay more fees for more objections with a single current account slip. On the same slip pay the tax of 34.00 Euro in the case of a letter of appointment.

The notice of objection addressed directly and exclusively to the Direzione Generale per la Lotta alla Contraffazione – Ufficio Italiano Brevetti e Marchi – Divisione II – Affari Giuridici e Normativi, can be:

  • filed by hand in 3 copies, the original of which with stamp duty (one stamp every 4 pages), to the Italian Patent and Trademark Office: Ufficio Italiano Brevetti e Marchi - via Molise 19 - 00186 Rome, during office hours; in this case a copy is returned as receipt
  • sent via post in 2 copies, the original of which with stamp duty (one stamp every 4 pages), to the Italian Patent and Trademark Office: Ufficio Italiano Brevetti e Marchi - via Molise 19 - 00186 Rome, by registered letter with acknowledgement receipt or through another delivery service certifying its receipt
  • sent via certified mail (PEC) to  Questo indirizzo email è protetto dagli spambots. E' necessario abilitare JavaScript per vederlo. Questo indirizzo email è protetto dagli spambots. E' necessario abilitare JavaScript per vederlo. . To be able to take advantage of this service, the user must have a PEC box pursuant to the current regulations. In this case, the notice of objection must be sent in single copy, showing the revenue stamp as attachment to the message, together with the scan of the receipt of the paid fees.

The next steps

Within two months from the deadline to file the objections, the Office carries out an investigation to verify the admissibility and eligibility of the deed and the payment of the objection fees.

Having carried out these verifications, the IPTO sends the notice of objection to the applicant and informs the parties of the right to proceed to a settlement agreement, pursuant to art. 178, c. 1 of the IPC. The settlement agreement must be concluded within two months from receipt of the communication made by the Office. Such a deadline is not mandatory, as the parties may extend it, with common request for extension to be submitted before the deadline, up to a maximum of one year from the date of receipt of the first communication made by the Office.

If the agreement is reached, the objection is extinguished.

Whereas, if at the end of the period for reaching the settlement agreement, the application for registration of the trademark is not withdrawn or restricted, the opposing party, within the mandatory period of two months from the deadline for reaching the agreement, must send the documentation under art. 176, comma 4, to the Office:

  • a copy of the application or certificate of registration of the trademark on which the objection is based, except for national applications or certificates and, if it is the case, the documentation relating to the priority right or pre-existence of which it benefits, as well as their translation into Italian; in the case of pre-existence, this must have already been claimed in respect of the application or registration of the CTM
  • any other documentation to prove the alleged facts
  • the documentation required to prove the legitimacy to file the objection, should the prior trademark not be in its name on the Register held by IPTO
  • the deed of appointment of the representative.

The applicant, having received the notice of objection and the documentation filed by the opponent, within 60 days from date of receipt of such documentation, can submit the first relevant deductions, stating his position as a person entitled to the registration with any fact, argument and proof deemed necessary to support it and rebut the arguments of the opponent. The applicant may also file, within the same deadline, a request for the proof of use which asks that the opponent show the effective use of the trademark.

When the IPTO concludes the investigation it assigns the objection to the examiner who must analyse the reasons supporting the objection and those against borne by the applicant. Therefore, the examination will consist of a simultaneous comparison of the trademarks and of the products/services according to a system of interdependence of such evaluation criteria.

At the end of the procedure the examiner will decide whether to accept or reject the objection. This decision can be appealed before the Board of Appeals.

In the case of the final decision to accept the objection, the Office will reject the registration application of the disputed trademark; vice-versa, in the case of the refusal of the objection, the trademark will be registered.

All of the examiner’s decisions are published in the section Regulations and law.

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