Oppositions are administrative proceedings that allow the proprietor to “oppose” the registration of a subsequent identical or similar trademark required for identical or similar products or services.
We strive towards serving our clients to ensure the protection of the trademark rights thereof against subsequent filings that could create grounds of likelihood of confusion for the consumer due to the similarity between the signs and the affinity of the goods or services that they distinguish.
Our clients who have initiated the monitoring service on the trademark thereof can monitor the filings of trademarks susceptible to likelihood of confusion carried out by third parties in Italy, Europe and worldwide. This monitoring allows companies to promptly file administrative oppositions within the short time limits (usually three months) laid down in the procedures. At the end of the opposition, in many countries, including Italy, as a matter of fact the subsequent registration of an identical or similar trademark can only be invalidated through invalidity proceedings and thus with higher costs, time and commitment for the proprietor of the prior trademark.
In a normal opposition proceeding, there are a number of aspects that need to be taken into account, including:
- the literal, semantic, phonetic and figurative likelihood of confusion between the signs;
- the likelihood of confusion between the products and/or services, in particular with reference to the relative distribution channels;
- the collection of evidence supporting opposability of any de facto trademark rights;
- the collection of evidence for possibly proving the actual use of the sign by the proprietor of the prior right in the event of a non-use objection;
- the collection of evidence for the possible classification of the prior de facto trademark and thus with more extensive protection;
- the collection of evidence for proving possible filings carried bad faith by a dealer or an agent for example.