Some years ago Italy introduced an administrative procedure for opposition to the registration of trademarks. It is now possible to make some observations on this development.

One that merits particular attention is the fact that the administrative opposition procedure in Italy, although inspired by the Community opposition procedure, has a number of major limitations, in terms of the rights that can be actioned.

Indeed, the Italian procedure can be initiated only if the opponent is:
– owner of a prior mark that is effective in Italy, either applied for or registered (this faculty is also extended to exclusive licensees);
or is:
– a party entitled to a well-known sign/name, pursuant to Article 8 of the Italian intellectual property code, and has not given permission for the mark to be filed by other parties.

The grounds for opposition are furthermore restricted to the following cases:
– identity between trademarks and products/services or alleged identity/similarity between trademarks and identity/affinity between products and services. The risk of confusion, including in terms of risk of association, is a condition of bringing the action;
– violation of the right to the well-known sign/name pursuant to Article 8 of the Italian intellectual property code by an unauthorized third party.

This means that, for example, an opposition cannot be filed in Italy by someone who has a right that derives solely from the prior use of the sign.
In the same way, the owner of a “renowned” trademark cannot file an opposition against third parties who appropriate the goodwill value of their sign and acquire an undue economic advantage or prejudice the other party’s trademark, when this conduct, although flatly prejudicial, does not also create a risk of confusion/association.

There is another factor to consider.
The decision of the Italian Patent and Trademark Office (IPTO) to accept the opposition in whole or in part, or to reject it, can be appealed before the Appeals Board. Since this Board is a legal entity, it issues its decision in a ruling that, if not appealed further to the Supreme Court, forms a res judicata between the parties.
This means that specific grounds for opposition that have been ruled on by the Appeals Board in connection with an administrative procedure cannot be used to bring a new civil lawsuit.
However, legal action could be based on further grounds, other than those deduced in the administrative procedure.

What would thus be created is a sort of half-ruling, formed through a summary investigation and outside the system of wide-ranging guarantees of debate and the right to defense given by a court proceeding, with the risk that the latter – although it can be brought separately – may in the end be conditioned and limited by the impossibility of re-evaluating the grounds that were ruled on in the administrative procedure.

The opposition procedure therefore seems to be advisable only in clear-cut cases, and it is preferable to take legal action in other cases.

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