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Friday, 8 July 2011

Italy implements trade mark registration opposition procedure -- almost!

STOP PRESS: check the comments posted below and you'll see that the Decree has been published in the Official Gazzette and is in force as of today, 8 July!  The first National Trade Mark Bulletin will be made available on the website of the Italian PTO as of next Monday 11 July. The Kat graciously thanks all his Italian friends for their part in bringing this news item to the attention of his readers.


Built for speed, but not yet on the road? The new
Italian opposition procedure is guaranteed to outstrip
the pace of the fastest court -- but it still needs
the push-start of official publication
Here, all the way from crazy, busy, creative Milan, is a bit of news from the IPKat's friend Carolina Cordero di Vonzo (Hogan Lovells -- who disappointingly do not appear to have secured as a trade mark the name HogLove, by which they are known in some English-speaking quarters of the planet).  The news is a sort of un-news really: for some time now this Kat has received various missives announcing the bright, shiny new opposition procedure which will please owners of earlier marks, frustrate applicants for later ones, reward their professional representatives and delight all IP bloggers. An Italian opposition procedure should also satisfy all European harmonoligsts [Merpel explains: these are folk who argue in favour of making sure all European national and supra-national systems operate in the same way wherever possible], a large and vocal body which includes people with tidy minds, pan-Europeanists and anyone studying for a professional or academic exam.

Anyway, from what Carolina says it appears that the Italian opposition procedure is not quite up-and-running after all.  She tells us:
The news has been bouncing back and forth between law firms, Patent and Trade Mark Offices and IP research centres: Italy has finally implemented her trade mark opposition procedure! Well, this information is not wrong, but nor is it yet completely true. 
Let's take one step back. In an international context where most EU countries have an administrative procedure to deal with oppositions to trade mark registrations, Italy used to stand out because of its complete lack of any such procedure or, to be more precise, for not implementing the procedure that was already included in the current IP Code, in force since 2005. The procedure remained a dead letter because the implementing regulation had never been enacted and a system to publish trade mark applications had never been put in place. The only way for the owner of an earlier right to challenge a trade mark application was to commence a cancellation action through ordinary courts in Italy which, unfortunately, are not known for their speed [Is there any comparative data, wonders Merpel, by which the speed of 'slow' jurisdictions can be measured? Proper methodology is needed, too. After all, the European Patent Office is famed for its slow oppositions -- but the IPKat thinks this is quite often a consequence of the parties' handling of them]. 

This "opportunity" has now, and finally, come to an end. Last year, the implementing regulations of the IP Code were enacted.  Then, on 11 May 2011, the Ministry for Economic Development passed the long-awaited "Opposition Decree", a further regulation detailing, inter alia, the timetable for implementing the opposition procedure. Accordingly, this procedure before the Italian PTO is now applicable to national applications filed in Italy from 1 May 2011, as well as to Italian portions of international applications published from the first July issue of the WIPO Gazette of International Marks. 
Merpel gets a taste of the new Italian opposition process
The Italian procedure pretty much echoes the practice of most EU members, with the peculiarity that Italy does not allow oppositions based on non-registered trade marks [Hmm, sniffs Merpel: if you can't use a non-registered trade mark as the basis of an opposition, you may as well not have it in the first place ...] or other IP rights such as corporate names, domain names or copyright: you basically need to be the owner or the exclusive licensee of an earlier registered trade mark to access the procedure (some other minor cases are provided for by the IP Code). [The IPKat has, at the back of his memory, a notion that the Italian courts -- unlike most others -- do grant injunctive relief on the strength of a not-yet-registered trade mark. If this is still the case, might this not serve as a rather dramatic alternative to an opposition based on a non-registered mark in an appropriate case?]

The opposition to a national application is to be filed within three months from publication on the Italian Official Trade Mark Bulletin - we are waiting for the first issue that should be made available on the website of the Italian PTO today. International applications can be opposed within three months from the first day of the month following the month when the application has been published on the WIPO Gazette of International Marks. 

Then we have the same old story: two months for the Italian PTO to verify whether the opposition is admissible, a cooling-off period of further two months for the parties to find an amicable solution (extendable up to one year upon joint request of the parties), if no solution is reached the proceedings before the Italian PTO begins. 

This said, the last word has however not yet been said: the "Opposition Decree" will only come into force when published on the national Official Bulletin -- which has not yet happened. Everything is set for the trade mark opposition procedure in Italy to come true, but until the "Opposition Decree" does not come into force it won't be a reality. We've asked the Italian PTO to make a forecast - they answered: "Presto!". Very Italian…."

2 comments:

Alessandra Romeo said...

The decree, as recorded by the Corte dei Conti (audit court) is available since as early as the beginning of this week on the official website of the Italian PTO here:

http://www.uibm.gov.it/images/stories/Normativa/leggi/decreto11maggio2011.pdf

Based on unofficial information I am aware of, its publication in the Official Gazette would be expected for today.

Edith Van den Eede - Società Italiana Brevetti said...

I am (and not only me :-) very happy to inform that the Decree WAS published in the Official Gazzette THIS MORNING and is in force as of today 8 July!

I further inform that the first National Trade Mark Bulletin will be made available as of next Monday 11 July.

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