A new administrative procedure is available as of 29 December 2022 in Italy to obtain the invalidity or revocation of a trademark registration by applying directly to the Italian Patent and Trademark Office.
As of 29 December 2022 it is possible to request the invalidity or revocation of a trademark in Italy through a new administrative procedure before the Italian Patent and Trademark Office (IPTO).
The new procedure is in place pursuant to the publication of Decree 19 July 2022 No. 180 of the Ministry of Economic Development (now renamed Ministry of Enterprise and Made in Italy), which amends the implementing regulations of Italy’s Industrial Property Code.
Why is the new procedure important?
So far, a court action was the only way to obtain the revocation or invalidity of a trademark in Italy. The new administrative procedure is a much more accessible, fast and cheap alternative. Of course the choice between the two avenues must be made with care according to the circumstances of each case and to the objective to be achieved.
Highlights of the new procedure
Grounds for revocation
Revocation of an Italian trademark registration may be requested administratively in the following cases:
- failure to use the mark in the last five years, where there are no legitimate reasons justifying lack of use;
- genericide, where the mark has become a generic term in the trade for the product or service it is registered for, or has lost its distinctive character because of the right-holder’s actions or inaction;
- the mark has become misleading.
Grounds for invalidity
Invalidity of an Italian trademark registration may be requested administratively if the mark:
- lacks distinctive character;
- does not satisfy requirements of shape marks under Article 9 of the Italian Industrial Property Code;
- consists of an emblem protected under international conventions or by an emblem or sign of public interest, without the authorisation of the competent authority;
- is against the law, public policy or accepted principles of morality;
- is misleading for the public;
- is barred from registration under the laws of the European Union or of the State or international agreements concerning the protection of denominations of origin and geographical indications, of traditional terms for wines, of traditional specialities guaranteed and of names of plant varieties;
- has been filed by an agent or representative of the right-holder without the latter’s consent or without a justified reason.
In addition, a request for invalidity can be filed for a registration concerning a mark lacking novelty in certain cases, and in particular if the mark is:
- an earlier identical mark already registered by a third party in Italy or with validity in Italy for identical products or services;
- an earlier identical or similar trademark already registered by a third party in Italy or with validity in Italy for products or services that are identical or similar, if there is a likelihood of confusion or association for the public;
- an earlier identical or similar trademark already registered by a third party in Italy or with validity in Italy and enjoying a reputation, if use of the later trademark would, without just cause, take undue advantage of the distinctive character or renown of the earlier trademark, or would cause prejudice to them.
- an earlier identical or similar mark that is already well known as per Article 6-bis of the Paris Convention for the Protection of Industrial Property.
How the procedure works
The procedure is in many ways similar to the EUIPO’s analogous procedure for trademarks of the European Union.
Once the request for invalidity or revocation is filed, the conflicting parties are given a two-month period, that can be extended up to a year by joint request of the parties, to reach a possible agreement. In the absence of an agreement, sixty days are given, first to the owner of the challenged trademark and then to the party filing the request, to file claims and counterclaims.
During this phase, in the case of an invalidity action based on an earlier trademark, the owner of the challenged trademark may request proof of use of the earlier trademark on which the invalidity action is based, if it is has been registered for more than five years.
Pursuant to the exchange of statements between the parties, the IPTO issues its decision.
Proceedings should not last more than 24 months, but parties may jointly request a suspension at any time.
Any questions on trademark invalidity or revocation in Italy? Contact us.