As of 29th December 2022, it is possible to start the new administrative procedure to assess the revocation and to request the invalidity of a currently valid registered Italian trademark before the Italian Patent and Trademark Office.
The new administrative procedure pairs the traditional judicial procedure aiming at simplifying and speeding the resolution of disputes pertaining to the revocation and invalidity of a title.
Below are highlighted the grounds consenting the start of such actions.
Revocation grounds
The reasons to file a revocation request are the vulgarization of the trademark (loss of distinctive capacity), its misleading character and the failure to use it in the 5 years following the registration.
Invalidity grounds
The invalidity request can be filed when the trademark should not have been registered due to absolute grounds for invalidity – that is, grounds able to block ab origine the registration of the sign – or due to relative grounds for invalidity, i.e., due to a conflict between the sign at issue and earlier right of third parties.
For what concerns the absolute grounds for invalidity, the request can be filed when the trade mark does not satisfy the requirements listed in articles 7 (object of registration), 9 (non-traditional trademarks and shape trademarks) and 10 of the Italian Industrial Property Code.
Moreover, absolute grounds for invalidity are the lack of distinctive character of the trademark (art. 13) and the fact that the sign at issue is illicit because, among other aspects, it is contrary to the law, to public policy or morality or capable of misleading the public in any way (art. 14).
The other causes excluding a sign from the registration, in accordance to art. 14 of the Italian IP Code comma I, letter c-bis, ter, quarter and quinquies (having as object the denominations of origin (DOP), the geographical indications (IGP), the traditional terms for wines and plant varieties) are equally absolute grounds for invalidity.
On the other hand, relative grounds for invalidity are, among others, the same instances which legitimize the filing of a formal act of opposition to the registration pursuant to art. 12 of the Italian Industrial Property Code and that is, for example, the identity with respect to an earlier title already registered for the same products and services (art.12(1)(c)) or when the trademark is similar to an earlier trademark already registered for identical and/or related products and/or services if the identity or similarity between the signs and the identity or similarity between the products or services in comparison may determine a risk of confusion for the public can be determined (12(1)(d)CPI).
The procedure
The requests, written and motivated, aimed at the verification of the revocation or at the declaration of invalidity of a national trademark or of the Italian portion of an international registration, may be filed, among others modalities, through the dedicated portal of the Ministry of Enterprise and Made in Italy.
The request can concern only one trademark registration and in order to be admissible must contain:
- a) the identification of the owner, number and date of registration, with regards to the trademark for which the declaration of invalidity or revocation is requested;
- b) the identification of the trademark, origin denomination, geographical denomination, wine traditional terms, guaranteed traditional peculiarity, plant variety denomination or other earlier exclusive right, with regard to the right of the applicant, when such right is a requirement of active legitimization pursuant to art. 184-ter of the Italian IP Code.
- c) the grounds on which the request is founded and, in case the application of the trademark registration was filed by an agent or a representative without the consent of the proprietor or without due cause, the possible request of transfer of the certificate of the trademark registration to their own name as of the filing date.
Once the request is filed, the Office will grant the conflicting parties two months, starting from the date of the communication of the beginning of the procedure, extendable up to a year, to reach a possible conciliation agreement. In lack of an agreement, the Office will assign to the proprietor of the challenged trademark and to the subject filing the request, sixty days to file, respectively, the claims and counterclaims.
The Office, then, might accept, totally or partially, the request ascertaining the revocation or which declares the invalidity of the trademark or rejecting it.
Against the decision of the Office, and within sixty days from its reception, it will be then possible to appeal before the Court of Appeals.
We are ready for this new procedure and we confidently wait to see positive results.
Giulia Mugnaini