Author: D.ssa Giovanna Del Bene
The Italian IP Code has been amended by Law No. 102 of July 24, 2023, which entered into force on August 23, 2023.
Regarding the opposition procedures and the nullity proceedings, the following changes were introduced.
- Opposition procedures
According to Article 15 of the Amendment Law, the opposition procedure can now be started by the Ministry of Agriculture (MASAF) as Authority for geographical indications and indication of origins that do not have a recognized consortium.
The Article 25 replaces paragraph 1 of Article 178 of the Italian IP Code, by establishing two hypotheses in which the two-months term for the Italian PTO to communicate the initiation of the opposition proceedings does not apply: if the opposition is suspended under Article 180 comma 1 from lett. b) to e-ter) IP Code; if the applicant has filed a limitation request and it is necessary to obtain the opinion of the opposing party for the continuation of the procedure as per Article 178 IP Code.
This amendment considers circumstances that could lead to the termination of the opposition procedure: reaching an agreement between the parties and the voluntary limitation of the trademark application. Therefore, it allows the opening of proceedings to be postponed, even beyond the deadline of two months from the presentation of the opposition.
- Nullity proceedings
Firstly, the Amendment Law at Article 26 introduces a new ground for nullity proceedings. It has modified Article 184-bis of the Italian IP Code and now it is possible to request the invalidity of a trademark characterized by words, figures, or signs that could jeopardize the image or reputation of Italy.
In addition, the insertion of the new comma 8-bis establishes the prohibition of the fragmentation of applications for invalidity or revocation. Therefore, filing multiple nullity proceedings based on different trademarks against the same trademark is precluded.
Moreover, the Article 27 has modified Article 184-quarter of the Italian IP Code.
The first novelty regards comma 1, which defines as “request” and no longer as “application”, the act by which the revocation or declaration of invalidity of a trademark is sought. The amendment has no substantial nature.
According to comma 2, after the preliminary examination by the Italian PTO of the admissibility of the request for revocation or invalidity, it is established that the Office will notify the parties the nullity request, informing them of the possibility to reach an agreement within two months from the date of the communication, which may be extended, at the joint request of the parties, up to a maximum period of one year. If no agreement is reached, the trademark owner facing nullity proceedings has 60 days to submit its brief. This is the first major innovation introduced, as previously, that notice should merely contain the information of the beginning of the adversarial phase of the revocation or invalidity proceedings and the invitation to the owner of the trademark to file observations within a specified period. Now the steps of the nullity proceedings are identical to that applicable to the opposition procedure, including the introduction of a cooling-off period to grant to the parties the possibility to reach a settlement of the matter, thus saving costs and time for both the parties and the Office.
Moreover, the provision that “any document submitted by the applicant” should be attached to the communication is deleted, since it is now provided that only a copy of the application is attached to the communication.
Finally, the third novelty concerns the novella in comma 3, which considers the hypothesis of not reaching an agreement pursuant to comma 1. Now the beginning of the litigation phase of the procedure is determined by the lack of agreement. Furthermore, as above mentioned, in the absence of agreement, it is established that the owner of the contested trademark has the right to submit the observations within 60 days of receipt of the communication. Previously, the Italian PTO was discretionally empowered, “during the revocation or nullity proceedings” to set a time limit at any time for the parties to produce further documents or to submit observations. The new forecast therefore guarantees a broader balance in the contradictory.
No changes were made to the remaining commas from 4 to 7 of Article 184-quarter IP Code.
Finally, Article 28 of the Amendment Law provides that the revocation or invalidity of a trademark may also be terminated if the contested trademark application is abandoned.
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