March 10, 2019

Trademark Revocation and Nullity in Italy: Administrative Remedy Available

Legislative Decree No. 15 of February 20, 2019, effective March 23, 2019, introduced several important changes regarding trademark revocation and invalidity, implementing EU Directive 2015/2436 on the approximation of the laws of the Member States relating to trademarks, as well as EU Regulation 2015/2424 on the European Union trademark, which aims to achieve a single and coordinated market for industrial property rights.

What's changing?
The most significant change is the introduction of an administrative procedure that allows for the revocation or invalidity of a trademark to be challenged through a more streamlined and expedited procedure, an alternative to the one available before the national judicial authority (which until now was the only option available in our country).

The traditional judicial procedure for determining trademark revocation or invalidity is complemented by a more expedited administrative procedure, the rules of which have been inserted into the Industrial Property Code in the new Section II bis, Articles 184bis CPI et seq.

Therefore, two alternative systems are envisaged: one before the ordinary judicial authority and a faster and more practical one, implemented directly at the Italian Patent and Trademark Office. The procedures are alternative and non-cumulative: the procedure cannot be initiated before the UIBM if an application for the same purpose, the same constitutive facts, and between the same parties has been filed simultaneously before the ordinary judicial authority.

When is it possible to request the revocation or invalidity of a trademark?
In short, a request for revocation may be filed when:

• the registered trademark has become a generic name for the product or has lost its distinctive character due to the conduct of the trademark owner;
• due to supervening deception, as the trademark has become misleading;
• due to non-use of the trademark.

An application for invalidity may be filed when:

• the trademark should not have been registered because it does not comply with the registration requirements;
• a prior right exists;
• the trademark registration application was filed by a representative without the owner's consent.

Who can file the application?
In the event of revocation or invalidity due to a failure to meet the registration requirements, the application may be filed by anyone with an interest.
In other cases of invalidity, however, only the owner of the affected prior trademark will be entitled to file a lawsuit.

What are the effects of a declaration of revocation or invalidity?
Legislative Decree 15/2019 provides that if the Italian Patent and Trademark Office issues a ruling declaring the revocation or invalidity, even partial, of a trademark registration to be irrevocable, the ruling will have effect erga omnes. However, while the effects of revocation begin from the filing date of the revocation application, those of nullity are retroactive to the trademark registration date.

Valentina Cervaro

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