Intellectual property

Actions for trade mark revocation and invalidity: Italy launches a new alternative procedure to the traditional court proceedings

Published on 10th Jan 2023

As of 29 December 2022, it is possible to file an application with the Italian Patent and Trademark Office (UIBM) for a declaration of invalidity and/or revocation of a registered trade mark.

In fact, on 29 November 2022 the Regulation implementing Decree no. 180 of 19 July 2022 of the Ministry of Economic Development (now the Ministry of Enterprises and Made in Italy) was published in the Official Gazette, containing amendments to Decree no. 33 of the Minister of Economic Development of 13 January 2010 implementing the Industrial Property Code adopted by Legislative Decree no. 30 of 10 February 2005, for the purpose of regulating the invalidity and revocation proceedings of trade marks before the UIBM.

This is a measure that operators in the sector had long been awaiting, given that the administrative procedures for the forfeiture or declaration of invalidity of national trademarks were introduced into the Italian legal system by means of Legislative Decree no. 15 of 20 February 2019 which, implementing European Directive 2015/2436 of 16 December 2015 (the so-called "Trademark Reform Package"), inserted in Chapter IV of the Industrial Property Code the section II-bis, headed "Forfeiture and invalidity of registered trademarks" and consisting of articles 184-bis et seq.

Grounds on which an application for revocation or invalidity can be based

An application for revocation of the trade mark may be made if the trade mark has become in the course of trade the generic name of the product or service, has otherwise lost its distinctive character,or has become deceptive or misleading or there has been nouse.

A trade mark may, on the other hand, be invalidated on  

  • absolute grounds, meaning the lack of the requirements for registration or in the case of marks consisting of the shape or other characteristics of the product, marks and coats of arms containing symbols and emblems, marks devoid of distinctive character, marks contrary to the law, public order and morality, deceptive marks or those excluded from registration in accordance with European and national legislation; 
  • relative grounds, in case of pre-existence of an earlier right to identical or similar marks, or where it has been registered by the agent or representative without the consent of the owner or a justified reason.
The parties entitled to file application

The parties entitled to file an application for revocation or invalidity are:

  • in the case of absolute invalidity, any interested party, 
  • in the case of relative invalidity, the owner of an earlier trade mark or the person authorised by law to exercise the rights conferred by a protected designation of origin or a protected geographical indication and, where the trade mark application has been filed by the agent or representative without the consent of the proprietor or a justified reason, the owner of the trade mark concerned.
The application 

An application for revocation or invalidity must relate to a single trade mark and may be filed for one or more prior rights belonging to the same owner and must contain, under penalty of inadmissibility: the identification of the owner, the number and date of registration of the trade mark, the identification of the trade mark, and a statement of the grounds (reasons of fact and law supporting the objection).

The application must also indicate the goods and services in relation to which the application is made. In the absence of such indication, the application will be deemed as relating to all the goods or services covered by the contested trade mark.

The application must be accompanied by

  • documents proving the facts alleged;
  • the documents proving the entitlement, if any;
  • the instrument of appointment, if any, if an agent has been appointed.

It is not possible to reserve the right to file documents at a later date.

The application is deemed withdrawn if the fee (Euro 500) is not paid and  is inadmissible if it is not written in Italian.

The procedure

If the application is admissible, the UIBM notifies the parties, informing them of the start of the proceedings and of the possibility of reaching a settlement agreement within a period of two months, starting from the date of the communication of the start of the proceedings, which period may be extended several times at the joint request of the parties up to a maximum of one year.

In the absence of agreement, the owner of the contested trade mark is given a further 60 days to file observations and, where applicable, to file a request for proof of use.

At the expiry of this time limit, if the owner of the contested mark submits its arguments and any request for proof of use, the UIBM transmits them to the applicant, assigning it a period of 60 days to reply. At the expiry of the time limit, the UIBM grants the trade mark owner a further 60 days to reply. If, on the other hand, the trade mark owner does not submit any rebuttal, the UIBM proceeds with the decision.

The UIBM issues its decision within 24 months from the filing date of the application, subject to any suspension periods.

The decisions of the UIBM and their effects

At the end of the revocation or invalidity proceedings, the UIBM may issue a decision:

  • in full acceptance of the application, declaring the revocation or invalidity of the trade mark for all the goods or services covered by the original registration;
  • in partial acceptance/rejection of the application, declaring the revocation or invalidity of the trade mark as it related to some of the goods or services covered by the original registration;
  • rejecting the application;
  • ordering the transfer of the ownership of the registration to the owner if the  application was filed by the agent or representative without the consent of the owner or a justified reason, if requested.

The UIBM's decision can contain an order for costs within the limit of Euro 600.

In the case of international registration, the UIBM notifies the World Intellectual Property Organisation (WIPO) of the decision.

The decisions are communicated to the parties, are public and recorded in the Register held by the UIBM.

The revocation or invalidity of a trade mark registration is effective against everyone when it is declared by an order of the UIBM that has become enforceable.

The revocation of a trade mark is effective from the date of filing of the application for revocation or, at the request of the applicant, from the earlier date on which one of the grounds for revocation occurred.

The invalidity of a trade mark is effective from the date of registration of the trade mark.

Appeal

All the UIBM's decisions are appealable before the Board of Appeal. 

The Board's decision is appealable before the Italian Supreme Court in cases of errors in the application of the rules relating to the procedure and in cases of errors in the application of the law.

The relationships between administrative and judicial proceedings

A court application based on the same subject matter, the same constituent facts and with the same parties filed at the same time as an application for revocation / invalidity of a trade mark before the UIBM is inadmissible and vice versa. 

Osborne Clarke comment

With the new procedure, the legislator has sought to introduce the so-called dual track, opening the way, as an alternative to court proceedings, to administrative proceedings before the UIBM

This is an instrument that complements the already operational opposition procedure and is intended to strengthen the protection of industrial property rights, with a view to deflating legal disputes, resulting hopefully in shorter timeframes and lower costs, in support of business competitiveness.
 

Please contact your usual Osborne Clarke contact for any queries you may have.

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