Legislative Decree No. 15 of 20 February 2019, which came into force on last 23 March, introduces some important innovations regarding the revocation and invalidity of the trademark.
In particular, it introduces an administrative procedure that allows the revocation or invalidity of a trademark through a faster procedure, instead of the one carried out in front of the national judicial authority. Legislative Decree 15/2019 aims to implement EU Directive 2015/2436 on the alignment of Member States’ trademark laws, as well as EU Regulation 2015/2424 on the Community trademark, which aims to achieve a unique and coordinated market for industrial property rights.
In addition to the traditional judicial procedure aimed to verify the revocation or declaration of invalidity of the trademark, there is also a faster administrative procedure whose discipline is included in the Industrial Property Code in the new Section II bis, articles 184bis CPI and following.
The new structure consists in the presence of two alternative systems: one regularly available in front of the ordinary judicial authority and the other, faster and with a higher functionality, directly available at the Italian Patent and Trademark Office.
However, the procedure cannot be implemented in front of the UIBM if an application was filed at the same time with the same object, the same constituent facts and between the same parties, presented to the ordinary judicial authority.
According to the provisions of articles 184bis of the CPI and following, it will be possible to file a written request at the Italian Patent and Trademark Office, with the necessary documents and, if it’s required, a mandate having as its object the assessment of the revocation or declaration of nullity of a registered trademark.
Concerning the application for revocation, this may be submitted when:
- a) the registered trademark became a generic name for the product or it lost its distinctive character as a result of the actions of the trademark proprietor;
- b) for deceptiveness, since the trademark became misleading;
- c) for lack of use of it.
Instead, the application for a declaration of invalidity may be made when:
- a) the trademark should not be registered because it does not meet the requirements for registration;
- b) there is an earlier right;
- c) the application for registration of the trademark was filed by a representative without the consent of the proprietor.
With regard to active legitimacy, the new provisions of the Industrial Property Code provide that in the case of forfeiture and nullity due to lack of the necessary requirements for registration, the application may be submitted by anyone interested. In other cases of invalidity, however, only the proprietor of the earlier trademark will be entitled to act.
Finally, D. Lsg. 15/2019 provides that if the Italian Patent and Trademark Office declares the revocation or nullity, even partial, of a trademark registration, with a measure that becomes irrebuttable, it will be effective erga omnes. However, the effects for invalidity are retroactive from the date of registration of the trademark, while for revocation the effects start from the date of filing of the revocation request.