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Differences between Italian and OHIM opposition proceedings
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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
