December 07, 2022
The new procedure for determining the invalidity and revocation of a trademark registered in Italy, effective from December 29, 2022
Starting December 29, 2022, a new procedure will be launched in Italy for determining the invalidity and revocation of a registered trademark.
From that date, in addition to the traditional judicial procedure (in the specialized courts of corporate law), it will be possible to initiate proceedings directly with the Italian Patent and Trademark Office to request:
- the invalidity of a registered trademark that lacks the absolute requirements for validity or that interferes with a prior registered right, and
- the revocation of a registered trademark that has not been used for more than five years.
Our firm, Gallo & Partners, through its team of qualified consultants, has the expertise and qualifications to represent you before the Italian Patent and Trademark Office in these procedures for determining the invalidity and revocation of registered trademarks.
A similar procedure is already available for European Union trademarks at the EUIPO, and its aim, now also available in Italy, is to speed up and simplify disputes relating to registered trademarks without the need to go to court. This new trademark cancellation procedure in Italy will ensure faster processing times than those required for proceedings before an ordinary court (the UIBM will issue its decision within 24 months of filing the cancellation request) and will be much cheaper, considering that the fee for filing one of the aforementioned nullity and revocation requests is €500.
The provisions governing the nullity and revocation of an Italian trademark were inserted into the Industrial Property Code (Articles 184-bis of the Italian Intellectual Property Code and following) by Legislative Decree No. 15/2019, which implemented European Harmonization Directive No. 2015/2436, which requires the implementation of these procedures by January 14, 2023.
More specifically, NULLITY can be asserted on
- grounds of absolute nullity and
- on grounds of relative nullity.
The main grounds for absolute invalidity are lack of distinctiveness due to the descriptiveness of the characteristics of the product or service to which the trademark refers, the trademark's inappropriateness, and, in accordance with the new Directive, interference with Designations of Origin and Geographical Indications, traditional terms for wines, traditional specialties guaranteed (TSGs), and plant varieties.
Relative grounds for invalidity concern the existence of prior rights on the same trademark and may only be filed by the owners of those prior rights.
In summary, a trademark is invalid on grounds of relative invalidity if it is:
- identical to an earlier trademark for identical goods/services (Article 12.1(c) of the Italian Code of Civil Procedure);
- identical or similar to an earlier trademark for identical or similar goods/services when there is a likelihood of confusion or association (Article 12.1(d) of the Italian Code of Civil Procedure);
- identical or similar to an earlier trademark that enjoys a reputation in the country, even for non-similar goods/services (Article 12.1(e) of the Italian Code of Civil Procedure);
- identical or similar to a trademark already well-known pursuant to Article 6 bis of the Paris Convention (Article 12.1(f) of the Italian Code of Civil Procedure).
The application for relative invalidity may be based on an earlier registered trademark (national, European Union, or international) and not on a de facto trademark.
Revocation may be invoked for:
- Registered trademarks whose use has been interrupted for 5 consecutive years;
- Registered trademarks that have become descriptive or vulgarized (Article 13.4 of the Italian Code of Civil Procedure);
- Registered trademarks that have become misleading or deceptive (Article 14.2 of the Italian Code of Civil Procedure).
We believe this new procedure for determining the INVALIDITY and REVOCATION of an Italian registered trademark can be an effective tool for trademark owners to more easily secure their rights, quickly, at a low cost, and through simplified procedures without having to resort to court.
Our firm, Gallo & Partners, is available to represent you before the Italian Patent and Trademark Office for these procedures and to provide you with the best strategies for effectively enforcing your trademark rights.
Martina Polo
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