Reposted from DLA Piper’s IPT ITALY BLOG
According to rumors coming from the Italian Patent and Trademark Office (UIBM) it is only a matter of weeks before the much awaited activation of a trademark opposition procedure in Italy.
An administrative procedure to oppose to applications for identical or similar trademarks was actually introduced in the Italian system back in 2005, with the enactment of the Industrial Property Code. However, it then remained dead letter, waiting for implementing ministerial decrees. Following the recent adoption, on 11 May 2011, of a decree which also incorporates the draft standard form to be used for filing the opposition, everything seems now ready for the official launch of the new procedure as of July 2011, when the UIBM will also start publishing its monthly online Official Trademarks Bulletin.
The opposition procedure will be open to owners of earlier trademarks registration/application and exclusive licensees. According to the above-mentioned decree of May 2011, the procedure is applicable in respect of (i) any trademark application filed in Italy as of 1 May 2011 and of (ii) the Italian designation of any international trademarks published on the first July issue of the WIPO Gazette of International Marks.
As the timeframe within which the opposition can be filed is rather tight (3 months from the publication of the relevant application), it is highly advisable that trademark owners and exclusive licensees have in place an adequate surveillance system to be able to promptly detect any trademark applications potentially conflicting with their earlier rights. Moreover, whoever intends to file an opposition on account of an earlier trademark must be ready to provide evidence of its use. Lacking evidence of genuine use of the earlier trademark the opposition will be rejected The notice of opposition to registration of a trademark is to be filed in Italian, using a standard form. Once completed, the form needs to be transmitted in 3 copies to the UIBM by hand, registered letter or authenticated e-mail.
If you are interested in this topic and you want to know more, feel free to contact me, Chiara Garofoli (chiara.garofoli@dlapiper.com)