New Italy Trademark Opposition Procedures To Help Brand, Mark Owners Against 3rd Parties

September 1st, 2011 by spyros lazaris

Owners of trademarks and well-known brand and personal names finally have a new intellectual property tool to protect their rights in one of the European Union’s biggest markets. In July 2011, Italy implemented comprehensive trademark opposition procedures to allow rights holders to challenge third parties seeking to usurp those rights.

The new procedures apply to both native Italian trademark applications and Italian extensions of international trademark applications. Oppositions are now available against Italian trademark applications filed as on May 2011, as well as territorial designations of international marks regardless of their date of registration that have been published in the World Intellectual Property Organization (WIPO) Official Gazette as of July 2011.

The new Italian procedures impose time limits on those wishing to initiate opposition proceedings that triggered by dates of publication. For example, oppositions may be brought against Italian trademark applications no later than 3 months from the date of publication in Italy.  Oppositions to local designations of international trademark registrations are possible no later than 3 months from the first day of the month following publication in WIPO’s Official Gazette.

The new procedures should significantly assist intellectual property rights holders protect their investment in trademarks and brand development. Those who have existing trademark rights may institute opposition proceedings against applications for marks that are either identical to that of the application to be opposed and which covering identical products, or that are so similar that a likelihood of confusion exists. Significantly image rights and personal names are also included in the protection available from opposition proceedings to provide recourse where use of the image or name by a third party might injure the associated reputation associated.

Italy’s new opposition procedures therefore come as a welcome benefit, as they offer an alternative to expensive and lengthy judicial cancellation proceedings. In addition to lower costs for the parties and strict time limits that require a decision within 24 months, the procedures include a mandatory initial cooling-off period of two months immediately following official notice that opposition proceedings have been requested. The procedures are therefore encouraged the parties to meet and settle their differences quickly before beginning adversarial proceedings.

While Italy’s move harmonizes options for trademark opposition with regular international practice, it is unclear whether the new procedures provide rights holders with full protection compared to other countries.  Italy’s rules appear to require that an opposition be based on an existing application or registration. Whether it is possible to base such an opposition on trademarks that have been in use but never registered, such as for brand names or logos for which no registration was ever attempted, remains to be seen. Those who have rights based on previous use alone may still need to resort to the Italian courts to challenge later-filed trademark applications or international registrations.

What Does Explosion of Social Networking and M-Commerce Mean for Protection of Intellectual Property Rights?

February 24th, 2011 by spyros lazaris

Online and mobile distribution of content is rapidly increasing, and mobile commerce sales are exploding – and for companies in the age of “smart” telephones and social networking sites, if they’re not thinking about doing business in the mobile world, they should be. Yet they must also be vigilant when taking advantage of these opportunities, to positively promote brands and ensure protection of valuable intellectual property rights.

As more companies distribute content using social networking sites and allow customers to use applications on mobile platforms, the need for brand support and IP protection has never been greater. Websites for social networking are ubiquitous, as are computers and mobile devices for accessing them – and they provide infinite opportunities for people to connect and express themselves, and for businesses to engage fans with lively content.

M-commerce uses mobile platforms to connect buyers and sellers in real-time and often in-store, and like social networking, offers incredible capabilities to connect with fans and customers. M-commerce has powerful potential to help companies establish and elevate brands, communicate a message, and solidify a reputation globally.  Mobile devices used by consumers are valuable tools for businesses – to distribute content via applications, encourage sales and interaction, and inform and enable purchasing decisions by providing, for example, bar code scanners, guides, product locators, and mobile payment solutions.

Social networking and m-commerce therefore offer unbounded possibilities for recognition and promotion of both brands and trademarks. However, this carries significant risks that must be carefully managed, as the proliferation of both social networking sites and web-enabled devices for conducting m-commerce has created a global breeding ground for intellectual property violation and brand value problems.

One concern is usernames – brand and trademark owners must proactively ensure that usernames related to or incorporating a brand or trademark are reserved for them. Usernames take on the role of brand identifiers, similar to domain names, except that the worlds of social networking and mobile commerce do not provide a uniform dispute mechanism for misappropriated brands or trademarks in usernames. Misappropriation complaints in the domain name context are handled through the relatively straightforward procedures of Internet Corporation for Assigned Names and Numbers – but not so with social networking sites or m-commerce. While it may be possible to successfully recover a username, there is by no means a uniform mechanism for doing so.

Similarly, brand and trademark owners must be watchful against trademark infringement and dilution, and take steps to make sure any negative or inappropriate references are minimized to prevent damage.  Companies must be alert for instances where a trademark is being used inappropriately, and be attentive to content and comments distributed by users of social networking sites or re-distributed by users of mobile commerce applications through social networking integration that contain information that may be harmful.

Social network sites and m-commerce offer unprecedented capacity to increase brand value and recognition, raise the value of trademark rights to distinguish products or services from others, and nearly limitless opportunities to connect with customers. But huge challenges confront owners of brands and trademarks, who must protect their investment by being constantly alert as the ability to engage with customers changes. Owners must make constant vigilance a priority while keeping customers and fans engaged in a positive way, as it can easily become difficult to deal with and minimize negative and damaging information distributed about a brand or trademark using the many tools now available.



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