Antonio Di Bernardo and Silvia Mati are “Recommended IP – Patent Agents & Attorneys” by Who’s Who Legal 2023

We are proud to share that Antonio Di Bernardo, THINX founder, and Silvia Mati, European Patent Attorney, are both “Recommended IP – Patent Agents & Attorneys” by Who’s Who Legal which every year identifies the foremost legal practitioners and consulting experts in business law.

About Mr. Di Bernardo, WWL says: “Antonio Di Bernardo impresses market sources with his top-notch advice on complex patent transactions in the telecommunications sector””.

About Mrs. Mati, WWL says: “Silvia Mati earns high praise from peers and clients alike for her unique ability  to easily understand complex concepts and ability to lead her clients to their targets


Antonio Di Bernardo – Thinx S.r.l. – Experts – Lexology

Silvia Mati – Thinx S.r.l. – Experts – Lexology



Barbie, the doll and the IP influencer

Author: Dr. Giovanna Del Bene

“You can be anything” has been Barbie’s motto since 2016, repeated several times even in the Greta Gerwig film that is smashing the box office these weeks and has exploded Barbie-mania worldwide.

The success of this iconic doll (and the current film) is not accidental or simply due to a well-successful marketing operation but has been diligently built over the years by Mattel through a careful strategy of both communication (Barbie was the first toy to have a market strategy based on mass communication through television advertising) and protection and exploitation of its Intellectual Property rights (trademarks, patents, designs, know-how, copyright).

Barbie was born in 1959 in America from an idea of Ruth Hadler, wife of the co-founder of Mattel, who, observing her daughter Barbara (hence the doll’s name) playing with dolls by attributing adult roles to them, sensed that little girls needed an alternative to mother-child play with baby dolls with baby-like features.

Ruth Handler in modeling Barbie’s appearance was inspired by a German doll, Bild Lilli (a comic book character), seen in a store during a trip to Switzerland and apparently initially given to men as a gadget because of tobacco shop purchases. Only later did Bild Lilli become famous due to its success with children.

It seems that Mattel purchased the rights to the German doll and Ruth Handler created the first doll having adult features and designed specifically for little girls.


The first Barbie (full name Barbara Millicent Roberts born in Willows, Wisconsin) is exhibited on March 9, 1959, at the annual American Toy Fair in New York City.

The first prototype was patented in 1961, which was followed by several industrial models and patents covering the most diverse aspects of both the doll (e.g., movement of joints, to the face, hair) and the objects of the so-called Barbie’s world (clothing, environments, accessories, furniture, and so on).

There turn out to be nearly 300 registered trademarks worldwide for “Barbie” in the toy class alone.

In addition to the word version of the trademark “Barbie,” the various figurative versions of the signature that have followed over time have also been protected.




At least 23 trademarks are registered in the European Union alone to protect the name Barbie in both word and figurative versions. The doll’s packaging is also subject to protection through European design.






EU Design 000327184-0002 packaging

Regarding pink that has always been associated with Barbie, Mattel could not obtain any registered trademark for the color alone. It is, in fact, a color widely used for toys (particularly dolls), clothing, games, etc., and generally associated with the female world. However, the constant use of the shade of pink used on doll packaging and various accessories causes consumer perception to immediately associate the color pink with the world of Barbie (Pantone coined the color Pink Barbie Pantone 219C).

The word Barbie is also the subject of numerous domain name registrations by Mattel.

In addition, Mattel has over time entered into numerous licensing and merchandising agreements, as well as several brand collaborations, as a strategy to exploit and expand the intellectual property of the Barbie brand. Below are just a few examples of the latest collaborations related to the release of the film: Moon, Kitsch, Opi, NYX, Teezer, GAP, Zara, Superga, Impala Skate, and so on.

Barbie has moved from television to film and as a modern influencer has also conquered social media. She is present with her own App and communicates with her young followers through her own YouTube channel and a personal podcast series “With Barbie you can be anything you want,” through which she encourages imagination and to experiment through play.

To conclude, “Humans only have one ending. Ideas live forever” (from the movie Barbie). Especially if they are well protected through trademarks, patents, designs.


© THINX Srl – August 2023



Antonio Di Bernardo and Giancarlo Belloni have been ranked as top patent attorneys in “IAM Patent 1000 2023”

We are proud to share that Antonio Di Bernardo, THINX founder, and Giancarlo Belloni, European Patent Attorney, have both been ranked by the prestigious IAM as top patent attorneys in its “IAM Patent 1000 2023” which every year identifies the world’s leading patent professionals.

About Mr. Di Bernardo, IAM says: “Fast, accurate and cost-effective” are the hallmarks of Antonio Di Bernardo offering as he “leverages extensive technical experience to help academic inventors in the assessment of the invention”.

About Mr. Belloni, IAM says: “Giancarlo Belloni has a profound understanding of clients’ goals and takes time to effectively translate complex matters into more simple terms”. He utilizes his expertise to provide extremely precise and detailed drafts and secure patents.


Antonio Di Bernardo – IAM (

Giancarlo Belloni – Patent 1000 – IAM (


“Green Claims Directive” and “Greenwashing” in Food & Beverage sector

Author: Giovanna Del Bene


Labels represent a fundamental marketing asset also in the Beverage sector, as they play an important role in the relationship between the producer and the consumers. In fact, in addition to carrying out an informative function for the consumer, the label also helps to communicate the very value of the product and can, therefore, make a difference in the moment of purchase, orienting the choice on a product compared to another. Generally, “label” in the Food & Beverage sector shows all the information (trademarks, images, symbols, indications and so on) on the packaging or on the bottles.

In this respect, the rules specifically relating to labelling are often confused with those laid down for the protection of the trademark. The label is to be considered as the “identity card of the product” and contains information on the characteristics of the same and the indications (mandatory and optional) required by law to be able to put in a market that specific product (for example, the name of the beverage, the type, the raw material, any alcohol content, the country of origin, the expiry date, the storage conditions, the producer’s data and so on).

Instead, we can say that the brand represents the “business card” of the company. The trademark is the distinguishing mark which has the main purpose of distinguishing the products and services of a company from those of other companies, indicating the entrepreneurial origin. However, the brand not only has a purely distinctive function but also performs an important advertising and communication function, guaranteeing quality and attracting the consumer. In general, the registration of the trademark is not required by law but only through it is possible to obtain exclusive protection on the name of the product and/or the commercial name of the company or on the graphic elements of the label or packaging. It is advisable to proceed with the registration of the trademark, when planning promotional or advertising investment activities and, in any case, before placing on the market (domestic or abroad) your product and before presenting the product to third parties (customers, agents, distributors, etc. etc.). All this to avoid that third parties can register the trademark in their own name on bad faith, thus illegally exploiting the goodwill linked to it and blocking the entry into that market to the legitimate owner.

Among the various indications on the label, entrepreneurs often include self-declarations regarding the impacts, aspects or environmental performance of the product or operator, such as the words “bio”, “eco”, “sustainable” or “made from recycled plastic bottles” or “ocean friendly” or “climate friendly” or “delivery with CO2 compensation”.

These are the “Green Claims” that many companies arbitrarily decide to include in the label, to try to accommodate the new sensitivity of consumers towards the environment and the needs of sustainability. The association of the brand or product with environmental issues is an increasingly common commercial practice. However, it is important to distinguish between “Green Marketing” and “Greenwashing” and know the legal implications of the latter.

Green Marketing is a marketing approach that focuses on the promotion of products and services with low environmental impact, with the aim of meeting the needs of consumers oriented towards ecological purchasing. In total transparency and complete consumer protection, it aims to communicate the eco-sustainability that is the basis of certain products and services, through the promotion of ecological business practices and the obtaining of environmental certifications.

On the basis of a study conducted by EUIPO in recent years (see Green EU trademarks: update 2022 – data for the period 1996-2021) the number of “green marks” has also increased. In 2021, the EU countries that registered the most “green marks” in the European Union were Germany, Spain, France, Italy, the Netherlands and Poland. The main product groups covered by these green EUTMs are «Energy conservation» and «Energy production» (over 48%), «Pollution control» (18%) and «Transportation» (11%). According to EUIPO, a European Union Trademark is considered “green” if its list of products/services contains at least one term “green” and refers to a sign that intends to communicate that it is an environmentally friendly good, service or business practice.

However, there is a high risk that these marks will be rejected by EUIPO because they often lack any distinctive character or consist exclusively of indications and signs describing the characteristics of the involved goods and services or because they are considered misleading to consumers.

The use of Green claims can be an effective marketing strategy for companies looking to attract consumers oriented towards sustainable purchasing, but it is important that these claims are true and correct. Current regulations require that product information is provided accurately and clearly and that ecological claims are verifiable, not to fall into the phenomenon of so much harmful Greenwashing. In fact, the improper or misleading use of green claims by a company, especially if in association with its brands, can damage the reputation of the company itself, making the brands deceiving and ending up having a negative impact on consumer confidence.

Greenwashing is a deceptive marketing practice, which is reflected in the brand reputation, through which some companies try to communicate in a misleading way an image of environmental sustainability, without having an effective positive impact on the environment. The term “Greenwashing” is manifested through the use of eco-labels, statements and symbols that can even deceive the consumer about the real environmental characteristics of a product or service, with the intention of driving the purchases, failing to provide useful tools to the consumer to verify whether the ecological claims are true or whether the declared environmental benefits are objectively verifiable.

On 22 March 2023, the European Commission published a proposal for a directive, known informally as the “Green Claims Directive”, to provide common guidelines to all member states for proper environmental communication. The aim of the directive is to put a brake on self-declarations, to provide consumers with clearer, more reliable and more verifiable information, so as to ensure that the products and services chosen are genuinely environmentally friendly. In addition, the Commission wishes to enhance and enhance the competitiveness of companies seriously committed to environmental sustainability.

The proposal will now be submitted for the approval of the European Parliament and the Council and if it is approved, Companies that use self-declarations or trademarks for green marketing purposes should ensure that the claimed environmental properties of their products and services are independently verified and validated by scientific evidence. Furthermore, it will no longer be allowed to indicate the overall environmental impact score of a product and comparisons with other products or companies will require equivalent information and data. The proposal also covers the regulation of “environmental labels”. According to the Commission, there are currently at least 230 different marks with a clear risk of confusion for consumers. Therefore, “only labels developed at EU level will be allowed, unless sufficient evidence is presented and the label is approved by the EU. The only indications excluded from the proposal are those already covered by existing or future EU regulations, such as the EU Ecolabel or the organic food logo”.

With regard to possible sanctions in the event of a breach of the rules, the Directive provides that it will be up to the Member States, through a control system, to introduce effective, proportionate and dissuasive fines for offenders, with amounts defined according to the nature and gravity of the infringement.

Finally, it is important that companies that use green marketing provide clear, verifiable, and certified information on the environmental properties of their products. Moreover, before applying to register or use green trademarks, they should pay attention to the possible risks of refusal by the competent Trademark Offices because of lack of distinctiveness or descriptiveness or else considered misleading for consumers.


© THINX Srl  – May 2023

Protecting Food and Beverage Processing Technologies

Author: Eng. Antonio Di Bernardo

Food industry is one of the most active and innovative, not only because new foods are coming on our tables, but also because automation is a must for any companies processing food and beverage (F&B)

Despite traditional foods are produced following centenary-old recipes, mass production requires automated machines which must be up to the hilt in terms of speed, performance and low energy consumption. There’s no alternative to stay on the market.

At Interpack, in Dusseldorf, more than 150 exhibitors will show their brand-new technologies for processing F&B. Each of them has spent time and resources in R&D to properly design machine and plants that respond to the needs of F&B companies.

Sometime the innovation brought by a company can be so trivial as genial (the Egg of Columbus), sometimes the innovation is not trivial, but it can be so evident and easy to be implemented by competitors. As a result, a company that has spent much time in finding a solution to a technical problem, to provide improvements and respond to the market needs, can see its solution copied soon after the exposition.

How can these innovative companies secure themselves and their investments? The answer is simple: by registering patents.

Patents are very effective solutions to keep technologies safe because they allow to protect a general technical idea that can be deployed in different ways. The more the invention is disruptive, the more will be the scope of protection of the patent which is not limited to the exact wording of the claims (defining the protection conferred by the patent) but is extended to all equivalent solutions.

Patents allow protecting both machines and methods, this means that companies can get protection over both the physical device and the processes implemented by the machines. This is very important because by protecting the processes, the patent owner can get a somehow broader protection, e.g. over particular actions or steps independently from the technical elements used to make them.

Patentable methods are also the software algorithms that are used to control machine operations, e.g. software that process acquisition data to decide on F&B  quality in order to change control parameters of the machine. Software is more and more pervasive and important in F&B processing, and the huge amount of data available has made artificial Intelligence (AI) a reality adopted to control performance of food processing machines.

AI allows taking decisions that are often too difficult to be taken by human minds and is therefore used to solve optimization problems involving several parameters. In this field of technology, AI is typically used for dosing ingredients, saving energy, or controlling parameters to optimize F&B processing. Also, if AI is often based on well-known classes of algorithms (e.g. Support Vector Machines, Neural Networks or Genetic Algorithms) the particular application, feature selection or training adopted, can make the solution patentable.

This article was first written for and published by “Food Processing” magazine of Editrice Zeus.

The invention of the windshield wiper is female!

Author: D.ssa Giovanna Del Bene

As is well known, the windshield wiper is a cleaning device for the windshield of land, sea and air vehicles in case of rain, snow or dust etc. etc. to keep it clean, ensuring visibility. It is present on all vehicles (sometimes even at the rear of the vehicle: rear window wiper) and often by legal requirement.

However, perhaps not everyone knows that the inventor of the windshield wiper swing arm is believed to be a woman: Mary Anderson. The idea was patented in the United States on November 10, 1903 under No. 743,801.

The story about the origin of the idea is controversial. Some narrate that she was a great traveler but did not know how to drive, so she often shifted cabs, and when it rained, the taxi driver was forced to stop to clean the windshield while the meter continued to rise. Others relate that the idea came about because of a visit to New York in the winter of 1903. Anderson observed a streetcar driver keeping both windows open to clean the windshield of snow, so she thought of designing a hand tool to keep the windshield clean. The tool consisted of a lever inside the car that moved a rubber stick on the outside of the windshield.

After obtaining the patent, Anderson tried to sell it, but without commercial success: some claim this was because the invention was made by a woman; others report that the innovation was received negatively because it was thought that the movement of the device could distract motorists. The patent lapsed in 1920.

Likewise, the first automatic windshield wipers were invented by a woman, Charlotte Bridgwood, who filed a patent for her invention in 1917. Unfortunately, Bridgwood’s invention was also met with distrust by the market.

Probably, the timing was wrong. At the time, in fact, automobiles were not so widespread, and it was not until 1922 that Cadillac began selling cars having windshield wipers as standard equipment. According to a cliché, women would always be late; instead, Mary Anderson and Charlotte Bridgwood were “too far ahead” for the time.

“In 2023, WIPO (World Intellectual Property Organization) has decided to celebrate talented women around the world. Responding to this call, THINX will publish stories of women who have left their mark on intellectual property and their role as carriers of innovation and creativity.”

© THINX Srl – April 2023



New Nice classification: trademarks related to virtual goods in the metaverse and NFT finally protected

Author: D.ssa Giovanna Del Bene

On 1 January 2023, the 12th edition of the Nice Classification came into force.

This is an internationally recognized system, established following the Nice Conference in 1957, revised in Stockholm in 1967 and Geneva in 1977, and amended in 1979, which is used for the classification of goods and services for trademark applications. Currently, the Nice Classification consists of 45 classes (34 classes of goods and 11 classes of services). Each class contains a list of terms that define the scope of protection of the goods or services to be protected through trademark registration.

Every year, the Committee of Experts on the Nice Classification updates the classification according to market and user needs.

In this respect, the 12th edition was particularly eagerly awaited by professionals and trademark owners, as it introduces important novelties concerning the way trademarks are protected in the metaverse regarding virtual goods and the use of NFTs, which until now were not expressly provided for in the Nice Classification.

NFTs (acronym for Non-Fungible Token) are certificates registered on blockchain, which represent the deed of ownership and the attestation of authenticity and uniqueness of a digital asset (they are therefore not interchangeable).

The term METAVERSO originated in Neal Stephenson’s 1992 science fiction novel Snow Crash as a combination of the terms ‘meta’ (from Aristotle’s ‘Metaphysics’) and ‘universe’. Recent years have seen a strong development of the metaverse due to the advancement of virtual reality technology and many companies, such as Microsoft and Facebook, are investing in this parallel market. The metaverse is a virtual reality projected onto the web and shared simultaneously by several people. These are shared three-dimensional spaces (so they are not owned by companies) where users move freely (with their own identity or using avatars), performing social and commercial activities. Access to the metaverse is through registration on a computer platform that can be accessed simply through a computer and an Internet connection. The use of visors or augmented reality devices is recommended to enhance the experience. Purchases can be either real or virtual (via crypto assets).

This new digital reality has proved to be an opportunity for major brands and companies in general, so much so that there has been an increasing number of trademark applications containing terms related to the metaverse, virtual goods and non-fungible tokens (NFT). This has made it necessary for Trademark Offices to provide guidance to users on the classification of these new types of terms.

In recent months the EUIPO (European Union Intellectual Property Office) and the USPTO (United States Patent and Trademark Office) have provided some guidance for the classification of these terms pending the entry into force of the new edition of the Nice Classification.

According to the EUIPO’s approach:

– Virtual products fall under Class 9 because they are treated as digital content or images. However, lacking clarity and precision per se, the term virtual goods needs to be further specified by clarifying the content to which these virtual goods refer (e.g. downloadable virtual goods, or virtual clothing).

– The term NFT is to be considered ‘new’ and for the Office, the term non-fungible tokens per se is not acceptable. NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital elements while remaining distinct from them, and it will be necessary to indicate the type of digital element that NFTs authenticate.

– Services related to virtual products and NFTs will be classified in line with established classification principles for services.

The USPTO has provided the following guidance in relation to the identification of virtual goods and services in the relevant classes:

Class 9: downloadable virtual goods, i.e. computer programs containing footwear, clothing, sports equipment, art, toys and accessories for use online in online virtual worlds.

Class 35: retail shop services of virtual goods, namely footwear, clothing, sports equipment, art, toys and accessories for use online in online virtual worlds; online retail shop services of virtual goods, namely footwear, clothing, sports equipment, art, toys and accessories for use online in online virtual worlds

Class 41: Entertainment services, i.e. virtual footwear that cannot be downloaded online, clothing, sports equipment, art, toys and accessories for use in virtual worlds created for entertainment purposes.

Below are some of the new features introduced with the 12th edition of the Nice Classification:

Class 9 incorporates the term “downloadable digital files authenticated by non-fungible tokens (NFTs)”, as well as “downloadable computer software for handling crypto assets’ transactions using blockchain technology” and “downloadable cryptographic keys for receiving and spending crypto assets” and also “virtual reality viewers” and “virtual keyboard projection devices”.

Class 36 includes ‘transactions involving cryptocurrencies’;

Class 41 includes ‘provision of online virtual tours’;

Class 42 covers “mining of crypto assets” and the “provision of virtual computer systems via the cloud”.

In light of the above, it is always advisable to consider extending the protection of one’s trademarks to virtual and NFT-related goods and/or services and to the presence in the metaverse, so as to be able to take advantage of the opportunities offered by this new market with greater serenity, avoiding fraudulent activities by third parties.

© THINX Srl  – January 2023




Unified Patent Court and the Patent Mediation and Arbitration Centre

Author: Giovanna Del Bene

After years of debate and negotiating, the new European Unitary Patent and the Unified Patent Court (UPC – with a local division in Milan) will be implemented in the first half of 2023. This event will have a relevant impact non only on future European patents, but also on already existing European patent rights.

Amongst the most important changes, the Unified Patent Court Agreement (UPCA) established a patent Mediation and Arbitration Centre. According to Article 35, the Centre shall have its seats in Ljubljana and Lisbon. It shall provide facilities for mediation and arbitration of patent disputes falling within the scope of the Agreement. However, a patent may not be revoked or limited in mediation or arbitration proceedings.

Moreover, the Centre shall establish Mediation and Arbitration Rules and it shall draw up a list of mediators and arbitrators to assist the parties in the settlement of their dispute.

There are several advantages for companies that choose arbitration or mediation over an ordinary judgment. In particular, these ADR procedures are characterized by confidentiality, by greater speed and cost-effectiveness, since the parties have control over the timing and the manner in which the procedure is conducted.

What’s new with the UPC

The UPCA provides for the UPC to have jurisdiction on already granted and validated European patents, as well as on pending European patent applications. In other words, the UPC will handle the litigations related to European patent rights and the rulings delivered by the UPC will have effect in all the 17 countries adhering to the UPCA.

From one side, this advantageously allows to enforce or invalidate a patent through a single action affecting a plurality of countries through a procedure which is meant to be fast and reliable; a first instance’s ruling is expected to be delivered within one year from the litigation start.

From the other side, a centralized procedure implies the risk to invalidate, with a single ruling, all validations of a European patent (among the adhering countries). Furthermore, the centralized procedure will have higher costs than corresponding national legal actions. In addition, while in Italy invalidity and infringement of a patent are discussed within the same lawsuit, in some cases the UPC might follow a split path, where invalidity and infringement have to be discussed in front of two different court divisions.

Given the current dynamic economic context and the new rules introduced by the UPCA, arbitration and mediation are to be considered as the most efficient way of resolving conflicts, as they are able to offer effective, professional and timely decisions.

At THINX our consultants are experienced in negotiation, arbitration and mediation techniques and we can provide our assistance during the above procedures.


© THINX Srl  – December 2022

New rules concerning invalidity and revocation proceedings for trademarks in Italy

Author: Dr.ssa Giovanna Del Bene

On 29 November 2022, the Regulation implementing Decree No. 180 of 19 July 2022 of the Ministry of Economic Development was published in the Official Gazette, containing amendments to Decree No. 33 of the Minister of Economic Development of 13 January 2010, implementing the Industrial Property Code adopted by Legislative Decree No. 30 of 10 February 2005, for the purpose of regulating the invalidity and revocation proceedings of trademarks before the UIBM.

The administrative procedures for the revocation or declaration of invalidity of national trademarks were introduced into the Italian legal system by Legislative Decree No. 15 of 20 February 2019, which, transposing European Directive 2015/2436 of 16 December 2015, included in Chapter IV of the Industrial Property Code the section II-bis, headed “Revocation and invalidity of registered trademarks” and consisting of Articles 184-bis et seq. However, implementation rules were awaited to make the revocation and invalidity procedures operative at the administrative level, without prejudice to the possibility of bringing actions before the judicial authorities.

In particular, the decree establishes that parties entitled pursuant to Article 184-ter of the Industrial Property Code may file an application with the Italian Patent and Trademark Office to ascertain the invalidity, revocation or both of a valid registered trademark.

The regulation will enter into force on 29 December 2022.


Entitled persons

The following are entitled to file a request for revocation or invalidity:

(a) in the cases referred to in Article 184a(2) and (3)(a), any interested party;

(b) in the case referred to in Article 184a(3)(b), the proprietor of an earlier trademark or the person authorized by law to exercise the rights conferred by a protected designation of origin or geographical indication

(c) in the case referred to in Article 184a(3)(c), the proprietor of the trademark concerned.

Grounds on which the application for revocation or invalidity is based

According to Art. 184bis (2) C.P.I., revocation may be invoked on the grounds laid down in Article 13 (4) (if the trademark has become in the course of trade a generic designation of the product or service or has however lost its distinctive character) Article 14 (2) (a) (if the trade mark has become deceptive) and Article 24 (for non-use).

According to Art. 184bis (3) IPC, a trademark may be invalidated on the following grounds

(a) the trademark should not have been registered because it does not meet the requirements for registration under Articles 7, 9, 10 (1), 13 (1), (2) and (3), 14 (1) (a), (b), (c-bis), (c-ter), (c-quater), (c-quinquies) and (d);

(b) the trademark should not have been registered because of the existence of an earlier right ex Article 12 (1) (c), (d), (e) and (f)

(c) the application for registration of the trademark was filed by the agent or representative without consensus or a proper-reason.


Contents of the application

The application shall contain:

(a) the identification of the applicant and its representative, if any, by indicating the surname, first name, tax code or VAT number, nationality and residence of the natural person or the name, seat and nationality of the applicant legal person or entity, one or more telephone numbers, an ordinary e-mail address and a certified e-mail address, and an address for service;

(b) the identification of the national or international registration designating Italy against which the application is made, by indicating:

1) the owner, the representation of the mark, the number, the filing date and any priority and date of registration

2) the goods and services, grouped according to the relevant classes, against which the application is filed;

(c) the grounds on which the application for revocation or invalidity is based;

(d) the signature of the applicant or his representative.

Where the application is based on an earlier trademark or right, it shall, in addition, contain:

(a) in the case of earlier registered trademarks

1) the indication that it is a national, European Union or international trademark designating Italy, the representation of the trademark, the owner, the number and the filing date of the application and any priority or seniority and registration date

(2) if the trademark has been the subject of a partial assignment, limitation, division, renewal or surrender, the relevant specification;

(b) in the case of trademarks with a reputation, the representation of the trademark and an indication of the geographical extent of that reputation;

(c) in the case of trademarks filed by an agent without consent, in relation to the proprietor’s earlier right:

(1) in the case of registered trademarks, the indications provided for in (a);

(2) in the case of non-registered trademarks, the representation and indication of the territory in which the protection of the right is claimed.

(d) in the case of rights referred to in Article 14(1) (c-bis), (c-ter), (c-quater) and (c-quinquies) of the Code

1) an indication of the nature of the protected right, specifying whether it is a designation of origin, geographical indication, traditional term for wines, traditional specialty guaranteed, registered plant variety name;

2) the representation of the sign, the number and the date of filing of the application or registration or, failing that, the effective date of protection;

3) the indication of the territory in which the protection of the right is claimed (Italy or the European Union) and the normative or conventional references on which the right to protection is based.

The demonstration of the payment of the prescribed fees must be attached to the application.



Once the fees have been paid, the Office examines the admissibility of the application.

After verification, the Office will notify the parties of the beginning of the proceedings, transmitting the motion for revocation or invalidity and advising them of the possibility of reaching a conciliation agreement within a period of two months from the date of communication of the beginning of the proceedings, which may be extended several times up to one year, upon the joint request of the parties.

In the absence of an agreement, the Office shall assign the holder of the contested trademark a term of 60 days for submitting his observations and for any request for proof of use.

Once the time limit has expired:

(a) if the holder of the contested trademark submits his observations and the request for proof of use, if any, the Office shall transmit them to the applicant and allow him a period of 60 days to reply. After expiry of the time limit, the Office shall grant the trademark holder a further 60 days to file the observations in reply. The request for proof of use of the earlier mark shall always be subject to the admissibility check;

(b) if the trademark holder submits no observations in reply, the Office shall proceed to a decision.


Request for Proof of Use

According to Art. 184quinquies of the Industrial Property Code, paragraph 1, in proceedings for a declaration of invalidity based on a trade mark registered with an earlier filing or priority date pursuant to Article 184a, paragraph 3 (b), at the request of the owner of the later trade mark, the owner of the earlier trade mark shall furnish proof that, during the five years preceding the date on which the application for a declaration of invalidity was filed the earlier trade mark has been put to genuine use within the meaning of Article 24 in connection with the goods or services for which it is registered and on which the application is based, or that there are proper reasons for non-use, provided that the registration procedure for the earlier trade mark, at the date of the application for a declaration of invalidity, had been concluded for at least five years.

Where, on the filing or priority date of the later trade mark, the period of five years during which the earlier trade mark was to be put to genuine use has expired, the proprietor of the earlier trade mark shall, in addition to the proof pursuant to paragraph 1, furnish proof that the trade mark has been put to genuine use during the period of five years preceding the filing or priority date, or that there were proper reasons for non-use.

If the earlier trademark has been used in accordance with Article 24 for only part of the goods or services for which it is registered, it shall, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered for that part of the goods or services only.

The aforementioned provisions shall also apply where the earlier trademark is an EU trade mark. In that case, the genuine use of the EU trademark shall be determined in accordance with Article 18 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017.

In proceedings for revocation for non-use of the mark pursuant to Article 24 of the Code, if the holder of the contested mark fails to provide proof of use within the allotted time limit, including any extensions, the Office shall grant the application.

In proceedings for a declaration of invalidity based on earlier marks, if the applicant does not furnish proof of use within the allotted time limit, including any extension thereof, the Office will reject the motion.


Decision and costs

At the end of the of the proceedings, applications for invalidity or revocation will be decided according to the chronological criterion of filing the motion.

The Italian Patent and Trademark Office issues its decision within 24 months from the filing date of the application, subject to any suspension periods.

According to Art. 184quater par. 5 C.P.I., At the end of the revocation or invalidity proceedings, if the Italian Patent and Trademark Office accepts the motion, it establishes the revocation or declares the nullity of the registration of the trademark in whole or in part or orders the transfer of the ownership of the registration in the case where the request referred to in Article 184a, par. 4, letter c), has been filed. In the case of an international registration, the Italian Patent and Trademark Office shall communicate the decision to the World Intellectual Property Organization (WIPO).

With the decision, the Office shall provide for the costs in accordance with Article 184c(6) C.P.I., including, within the limit of Euro 600.00, professional representation costs.

The decision is communicated to the parties and it is public.

Pursuant to Art. 184quater C.P.I., the measures declaring the revocation or invalidity of the registration or transferring the ownership of the registration of a trademark shall be recorded in the Register.


© THINX Srl – December 2022

The start of the Unified Patent Court: the right to opt-out

The Unified Patent Court has been officially launched and this event will affect your European patent applications and European granted patents.

The Unified Patent Court Agreement

The Unified Patent Court Agreement (UPCA) will enter into force at the beginning of next year, most likely on 1st April 2023. This event will have a relevant impact non only on future European patents, but also on already existing European patent rights.

In fact, the UPCA provides for the UPC to have jurisdiction on already granted and validated European patents, as well as on pending European patent applications. In other words, the UPC will handle the litigations related to European patent rights and the rulings delivered by the UPC will have effect in all the 17 countries adhering to the UPCA[1].

From one side, this advantageously allows to enforce or invalidate a patent through a single action affecting a plurality of countries through a procedure which is meant to be fast and reliable; a first instance’s ruling is expected to be delivered within one year from the litigation start.

From the other side, a centralized procedure implies the risk to invalidate, with a single ruling, all validations of a European patent (among the adhering countries). Furthermore, the centralized procedure will have higher costs than corresponding national legal actions. In addition, while in Italy invalidity and infringement of a patent are discussed within the same lawsuit, in some cases the UPC might follow a split path, where invalidity and infringement have to be discussed in front of two different court divisions.


The opt-out

During a transitional period ahead of the start of the new system, there is the possibility to exercise the right to be excluded from the UPC jurisdiction, also known as the right to opt-out[2].

An opted-out European patent will be litigated before the national courts where the patent has been validated. Thus, the European patent or, rather its national portions, will be enforced and litigated country by country, with independent outcomes according to the current practice.

Finally, a duly requested opt-out will apply for the entire European patent life, unless the patent owner decides to waive the opt-out right and to pass under the UPC jurisdiction. The waiver can be filed at any time of the patent life, unless a national litigation involving the European patent has been initiated. A waiver of the opt-out right is final and cannot be reversed.

The opt-out strategy

There are several factors to be considered when assessing the best strategy to adopt with respect to the jurisdiction to which subject your European patent rights.

In general, the main factors are economic assessments such as, for example, the ability to bear the costs of one or more centralised litigations, versus the ability to bear several litigations in several countries, the relevance of the patent for the market (the entire European market and/or the market of the single countries involeved), the number of member states where the patent title will have effect, and so on.

Of course, we are available to assist you in devising the opt-out strategy best suited to your needs.

However, it is important for European patent and patent application owners to early consider whether to exert the opt-out right and, in case, file a corresponding request.

Indeed, the opt-out right cannot be exerted (i.e. a European patent right is bound to the jurisdiction of the UPC) if, for example, a competitor has filed an invalidity action with the UPC before the opt-out is registered.

For this reason, there is a so-called sunrise period – which is expected to start in January 2023 – that will allow to file a request to opt-out before the UPC starts being operative.

Opt-out request

To make an opt-out request, the following information is required:

  1. publication number of the European title,
  2. in the case of a European patent, the countries in which it was validated,
  3. name/company name of the applicant(s)/owner(s) (for each validation country),
  4. address of the applicant(s)/owner(s) (for each validation country), and
  5. contact information of the applicant(s)/owner(s) (e-mail).

It is crucial that the information regarding the publication number and the name of the applicant(s)/owner(s) is correct. Indeed, an opt-out request with incorrect data will not be considered valid and may be successfully challenged by third parties.

Thinx consultants are available to assist you in submitting opt-out requests for all the European titles for which you wish to exercise this right.

Update: According to the notification published by the UPC (Adjustment of the timeline – Start of the Sunrise Period on 1 March 2023 | Unified Patent Court ( the entry into force of the UPCA is postponed to 1 June 2023 and, consequently, the sunrise period will start on 1 March 2023.



Giancarlo Belloni

Filippo Caruti

Antonio Di Bernardo

Silvia Mati


[1]Austria (AT), Belgium (BE), Bulgaria (BG), Germany (DE), Denmark (DK), Estonia (EE), Finland (FI), France (FR), Italy (IT), Latvia (LV), Lithuania (LT), Luxembourg (LU), Malta (MT), The Netherlands (NL), Portugal (PT), Sweden (SE) and Slovenia (SI).

[2]Art.83 of the UPCA