Trademark Oppositions in Italy

Oppositions in national trademark registration procedure in Italy

 

A trademark is any sign that can be represented graphically and capable of distinguishing goods or services.

For now, the opposition system has not yet been put operative by Italian Patent Office as the amount of the opposition taxes has not yet been defined.

This refers both to national and WIPO systems.

For now, the cancellation of a trademark both for absolute and relative grounds may be done through a court case.

The cancellation should be based on relative and absolute grounds, on non-use, bad faith issues; conflicting copyright or design rights; rights under Art. 6 bis of the Paris Convention or notorious or well-known mark; rights under Art. 6 septies of the Paris Convention or the equivalent thereto (registration in the name of the agent or other representative of the proprietor of the mark); rights of a registered company name (local or foreign), rights under Art. 8 of the Paris Convention or the equivalent thereto (trade names); rights under Art. 6 ter of the Paris Convention or the equivalent thereto (Prohibitions concerning State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations); offenses against public policy or principles of morality; if the trademark became generic or has lost its distinctive capacity or if it has become misleading or if it is contrary to the laws of the land, or for failure to comply with the Charter in the case of a collective mark.
Cancellation actions based on relative grounds cannot be brought if the owner of the prior right has knowledge of and has tolerated use of the conflicting registered mark for five or more years.
In case of non-use grounds, the deadline is after five years of non-use from registration.
The cancellation authority is the court system. Twelve specialized Intellectual Property sections of the Italian courts were set up in June 2003 to deal with IP matters.

If you are facing oppositions in national trademark registration procedure in Italy, please contact us at office@trademark-oppositions.com.