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

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.