Differences Italian and OHIM opposition procedure

ITALIAN vs CTM OPPOSITION PROCEDURE RELEVANT DIFFERENCESEdith Van den Eede, Italian Trademark Attorney

Società Italiana Brevetti (“SIB”), Florence

AAAML X International Congress 2012

Asociación Antiguos Alumnos de Magíster Lvcentinvs, Rome, March 23Oppositions and other crucial remedies in EU & Lati n American Countries

I. Substantive differencesII. Procedural differencesIII. Concluding remarks

TOPICS

III. Concluding remarks

1. Grounds 2. Italian case law divergent from OHIM

I. Substantive differences

2. Italian case law divergent from OHIM case law

I. Substantive differences

1. Grounds(i) Identical or similar marks* covering identical or similar

goods/services: i.e.goods/services: i.e.

� Double identity (identical signs and identical g/s)

� LoC (identical or similar signs & identical or similar g/s so

as to cause a LoC on the part of the public, including a LoA)

(ii) Certain non-registered rights failing prior consent to

register them as trademarks

* Earlier IT, CTM or IR designating Italy (TM registration or application)

I. Substantive differences

1. Grounds(ii) Certain non-registered rights failing prior consent to

register them as trademarks

� right of personal portrayal,

� well-known personal name,

� personal name other than the applicant’s name if its use

in the trademark may harm the reputation of the person

entitled to bear the name,

� well-known sign used in the artistic, literary, scientific,

political or sporting fields,

� well-known name or initial or characteristic emblem of

event or of non-profit body.

I. Substantive differences

1. Grounds

(ii) Certain non-registered rights failing prior consent to

register them as trademarks

Example

I. Substantive differences: Grounds

(ii) Certain non-registered rights failing prior consent to

register them as trademarks

Example: trademark applications forExample: trademark applications for

TM 1 TM 2 TM 3 TM 4 TM 5

JULIA VAN DEN EEDE OCEAN’S PAVM

ROBERTS EDITH TWELVE

for brokerage services

related to the sales of IP rights in cl. 35

I. Substantive differences

1. Grounds

⇒ NO opposition can be filed on the basis of: ⇒ NO opposition can be filed on the basis of:

� unregistered rights or copyrights (except in the specific cases set out above under 1. (ii)),

� domain names,

� reputation of earlier mark registered or applied for dissimilar g/s,

� company names,

� It is NOT possible for the owner to oppose against an application filed by an agent or representative in its own name and without owner’s consent.

I. Substantive differences

2. Italian case law divergent from OHIM case lawcase law

� Defensive marks

� Impact on global confusion assessment?

II. Procedural differences

II. Procedural differences

1. Who may lodge an opposition

Also exclusive licensee (unless exclusive license agreement excludes it)

(evidence to be filed within 2 months ̶ non extendable ̶ from expiry of cooling-off)

II. Procedural differences

2. Amount and payment opposition fee:

� Official fee: € 250 + stamp fee� Official fee: € 250 + stamp fee(+ € 34 if no general POA or POA including lodging ofoppositions already of record)

� To be paid prior to filing of opposition (failure ofattaching proof of payment leads to withdrawal!)

� Through post offices only

II. Procedural differences

3. Power of Attorney needed simply signed simply signed

4. Means of filing oppositionNo fax, through certified e-mail or certified mail (date

arrival, not sending date!) or in person, at the Italian

PTO, not at Chambers of Commerce)

II. Procedural differences

5. Time limit filing opposition against IR designating Italy designating Italy

3 months, commencing on the first day of the month

following publication in the WIPO Gazette

(no republication in Italian Bulletin or database!)

Example:

publication in WIPO Gazette on 23.3.2012, opposition period starts

on 1.4.2012 and ends on 1.7.2012.

6. Cooling -off period

II. Procedural differences

� extendable upon joint request

by the parties by up to a

maximum of 12 months

� to obtain refund opposition fee:

amicable settlement during COP

and communicated to PTO

II. Procedural differences

7. No search report (=> no notice to the

holders of earlier Italian trade marks)holders of earlier Italian trade marks)

8. No possibility to ask oral hearing before the Italian PTO, but standard before the Appeal Board.

II. Procedural differences

9. Defence of Proof of Use

� Applicant may request PoU of any registration if� Applicant may request PoU of any registration if

granted ≥ 5years - to be submitted within 60 days

from notification to do so (on penalty of the rejection

of opposition)

� Term extendable upon request up to a maximum of

6 months

II. Procedural differences

10. Decision:

must be issued withinmust be issued within

24 months from date of lodging opposition

(without taking into account COP or period of suspension such

as opposition based on pending application/mark pending

cancellation where such suspension is requested by its owner)

II. Procedural differences

11. Appeal

� before the Appeal Board (‘Commisione dei

ricorsi’) (60 days)

� possibility to appeal on points of law before

the Supreme Court (‘Corte di Cassazione’)

II. Procedural differences

12. Choice of forum

� instead of lodging opposition, the claimant may also

directly go to Court

� revocation and invalidity actions only

before the Court

invalidity: also against a pending application

III. Concluding remarks

� Welcome addition to the Italian legal system

� Some gaps and inconsistencies in the

complex legislative framework

� Inexperience of the Italian PTO

GRAZIE!!

Edith Van den EedeItalian Trademark Attorney

E-mail: edith.vandeneede@sib.itPhone: +39 05.52.63.22.1