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.
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