Recently, the Italian Ministry of Economic Development announced a new regulation on Italian trademarks, which stipulates the administrative procedure for invalidation and revocation of newly added trademarks in Italy. Trademark owners can apply to the Italian Patent and Trademark Office (IPTO) for invalidation and revocation of registered trademarks in Italy.
1. Background
Previously, as one of the few EU member states without administrative procedures such as revocation and invalidation, Italy’s trademark rights could only be protected through judicial procedures such as court litigation. The administrative procedures for invalidation and revocation of newly added trademarks, as a supplement to judicial procedures, have the advantages of shorter time consumption (simpler procedures than judicial litigation) and lower costs (lower costs than judicial litigation), which will accelerate the resolution of disputes related to registered trademarks.
The trademark owner may choose to submit an application for invalidation or revocation of the registered trademark through administrative or judicial procedures, but neither can be submitted together. If the parties have filed a lawsuit for revocation or invalidation with the judicial authorities, then if the same party makes the same request to IPTO based on the same reasons and evidence, it will not be accepted. In addition, if the same trademark and the same party, based on the same reasons and evidence, have already been ruled or are currently under review by IPTO for trademark revocation or invalidation applications, they will not be accepted.
However, filing an application for invalidation or revocation of a trademark through administrative procedures only applies to registered trademarks. For unregistered trademarks, other signs used in normal commercial activities, and applications for invalidation or revocation based on malicious intent, judicial channels are still required.
2. Reasons for declaring trademark invalidity
Registered Italian trademarks can be declared invalid based on absolute and relative reasons.
Absolute reason:
Trademarks lacking distinctive features;
Deceptive trademarks or violations of public order and good customs;
According to EU/Italian national legislation or relevant international agreements (of which EU/Italy is a member), trademarks cannot be registered for the protection of origin names and geographical indications, as well as traditional terminology related to wine, the protection of traditional characteristics, or plant variety names.
Relative reasons:
Similar or identical to a previously registered trademark of a third party, and the goods or services are also similar or identical, there is a possibility of confusion or easy misidentification of related sources;
Similar or identical to a previously registered trademark of a third party, regardless of whether the goods/services applied for are the same or similar, if the previously registered trademark has a certain degree of popularity, and the later trademark owner uses the applied trademark without justifiable reasons, causing damage to the distinctiveness or reputation of the previously registered trademark;
Similar or identical to a previously well-known trademark;
Trademark agents are not allowed to register trademark applications submitted without the consent of the trademark owner or for improper reasons.
3. Reasons for filing a trademark revocation application
According to the following reasons, a revocation procedure can be initiated against IPTO for a registered trademark in Italy:
Trademark becomes a common name in trade;
Lack of use;
Deceptive use.
4. Invalid/Revocation Procedure Flow
After the applicant submits a revocation or invalidation application, IPTO will set a two month negotiation period for both parties to resolve the relevant matters in a friendly manner during this period (this period can be extended to a maximum of 12 months).
After the negotiation period expires, if no settlement agreement is reached, the disputed trademark owner will have a 60 day period to submit a statement of opinion and a request for proof of use.
IPTO will send the opinion letter of the disputed trademark owner to the applicant and provide a 60 day response period.
IPTO will give the disputed trademark owner 60 days to file a counterclaim. If there are no objections, IPTO will make a decision based on the opinions/defenses and evidence submitted by both parties.
Both parties to the dispute may appeal to the Appeals Committee within 2 months after the issuance of the IPTO decision.
Please note that the application for invalidation and revocation procedures only applies to one trademark, but the same applicant may submit an application based on one or more of their prior trademark rights, and the applicant must state the reasons and evidence for initiating the revocation or invalidation procedures at the time of application. Both parties may jointly request the suspension of the procedure at any time, and if no suspension is required, the duration of the entire procedure is approximately 24 months.
In summary, the newly added administrative procedures for revoking and invalidating Italian trademarks have lower costs and simpler procedures. For trademark owners who have not timely laid out their trademark applications in Italy or who have not timely raised objections to Italian trademarks, it is a convenient and time-saving tool. Trademark owners should pay attention to preserving evidence of use and use this tool effectively to protect their rights!
