Introduction:

With Ministerial Decree no. 180/2022 (published in the Official Gazette on 29.11.2022), the Italian Government has completed the regulation of the actions for revocation and invalidity before the Italian PTO (hereinafter, collectively referred to as “cancellation actions”). The decree entered into force on 29 December 2022 implemented the rules already introduced in the Italian IP Code (“IPC”- notably articles 184bis – 184 decies) and completed the transposition of art. 54 of EU Directive 2015/2436 (which ordered that Member States introduce administrative cancellation actions by 14.01.2023).

This is a significant novelty for Italy, allowing the proposition of cancellation actions both in Court (the only available way until now), and before the PTO with a simpler (and cheaper) administrative procedure.   

Legal bases

a. Action for revocation of a registered mark

Actions for the declaration of revocation of a trademark may be proposed in the following cases:

• The trademark has become capable of misleading the public about the nature, quality or origin of the goods or services covered by it, due to the way it is used by its owner (see art. 14, par. 2, IPC);
• The trademark has become a common (generic) name for a product or service in presence of objective and subjective requirements provided by the law (art. 13, par. 4, IPC);
• The trademark has not been put into genuine use, in the last 5 years after registration for the goods or services for which is registered, unless such non-use is justified by a legitimate reason (Art. 24, IPC).

b. Actions for invalidity based on “absolute” grounds for refusal

First, the declaration of invalidity of a registered mark may be requested where such mark:

• is devoid of any distinctive character (e.g., because it consists exclusively of a generic or descriptive term for the qualities or nature of a product or service, see Art. 13 IPC);
• is unlawful, e.g.  if it is contrary to law, “public order or morality” or when it is likely to deceive the public as to the geographical origin or qualities of the goods or services identified by it (see art. 14, IPC);
• does not satisfy legal requirements for 3D marks (see art. 9, IPC);
• consists of an emblem protected by international conventions or a sign containing a symbol of public interest, unless the registration is authorized by the competent authority (see Art. 10, IPC);
• is excluded from registration in accordance with EU, national legislation, or international agreements on the protection of designations of origin (PDOs), protected geographical indications (PGIs), traditional terms for wines, traditional specialties guaranteed or denominations of plant variety (see Art. 14 IPC).

c. Actions for invalidity based on “relative” grounds for refusal

The declaration of invalidity of a registered mark may also be requested in the presence of third parties’ earlier rights, notably when the registered mark is (see art. 12, IPC):

• identical with a mark valid in Italy for identical goods or services;
• identical with, or similar to, a mark valid in Italy, for identical or similar goods or services if, because of the identity or similarity between the signs and the identity or similarity between the goods or services a likelihood of confusion may arise on the part of the public;
• identical with or similar to a mark valid in Italy for identical, similar or not similar goods or services, when the earlier mark enjoys a reputation in the EU or in Italy and the use of the subsequent mark without due cause may take unfair advantage of the distinctive character or reputation of the earlier mark or may cause prejudice to them;
• identical with or similar to a mark well known in a Member State, pursuant to art. 6-bis of the Paris Convention for the Protection of Industrial Property, for identical, similar or not similar goods or services, under the conditions set forth in the previous case.

It should also be recalled that a declaration of invalidity may be made where the application for registration of a mark has been filed by the agent or representative of the proprietor without it consent or without due cause.

IMPORTANT: It should also be noted that further grounds for bringing cancellation actions in Court (e.g., right to name or portrait, earlier de facto unregistered marks, etc.) have not been extended to administrative actions. This is in line with the choice made by the legislator for opposition proceedings: the enforcement of de facto unregistered marks in Italy are reserved to Courts.

Proceeding outline

The referred actions may be filed, respectively:

• in the case of revocation and “absolute” grounds invalidity, by any “interested party” (for instance any possible competitor of the trademark owner);
• in the case of “relative” grounds for invalidity, by the proprietor of the earlier mark or protected sign;
• in the case of a mark filed by an agent/representative without the consent of the proprietor, by the alleged proprietor itself.

Actions will be deemed inadmissible mainly if they:

– do not contain indications of the rights on which they are based,

– do not include the grounds in support

– are based on both grounds, revocation and invalidity, as well as if each action is directed against several registrations.

After filing and assessing the admissibility of an application, the PTO will grant the parties a two-month “cooling-off” period (extendable by joint petition up to 1 year) to seek an amicable solution  If no agreement is reached, the owner of the contested mark will have 60 days to file its observations in reply to the applicant’s grounds or to request proof of use of the earlier mark (if registered for more than 5 years). If a request of proof of use is filed, the applicant will have 60 days to present proof of genuine use.

After such exchange, the PTO will issue its decision, with the procedure theoretically lasting not more than 24 months: the decision may be then appealed before the Board of Appeals and after that, eventually, the Italian Supreme Court (Corte di Cassazione).

The phases of the described proceeding clearly recall the opposition procedure already in force (e.g., when providing a “cooling-off” phase), however, the applicant must present its grounds in support of its action at the time of filing, paired with all the other documents required by the law (e.g., the Power of Attorney), since late filing of documents is not allowed. 

The official fee for filing the described actions has been set at 500 euros.

Comments and strategic suggestions

On the one hand, the viability of administrative cancellation actions bears advantages for the protection of one’s trademark rights compared to judicial actions, in terms of increased speed of the proceeding and the lower costs (also aiming at deflating the judicial backlog of the Italian Courts).  In some cases, the Court route will remain preferable (e.g. in counterclaiming cases, or if a revocation of the trademark or invalidation action were to be accompanied by a claim of damages or unfair competition).

On the other hand, the easier accessibility of such actions will also clearly put greater responsibility on Italian trademark owner, who will now have to consider that their marks, after registration, may be invalidated more easily and without a precise deadline.

Therefore, it becomes extremely important for all trademark holders actively involved in the enforcement of their rights to plan useful strategies aimed at preventing future cancellation actions (such as, implementing and maintaining an internal service for the storage and archiving of proofs of genuine use of their trademarks, monitoring the status of their own trademark portfolio).

Further, with an Italian PTO that, especially in the past, was lax in granting borderline descriptiveness marks (so-called “weak marks”), it will be advisable to well assess the risks of counterclaim revocation actions before proceeding with enforcement of weak marks.  

Finally, it should not be forgotten that in Italy the Office does not conduct a substantive novelty examination and the opposition system is rather recent (it has been in force since 2011 only).  For these reasons, the Italian trademark register is still crowded with many similar or even identical trademarks coexisting.  The new procedure will make it easier to try and clean the register from trademarks that could undermine the distinctiveness of other trademarks and for too long have been tolerated (hoping that an acquiescence for tolerance has not matured in the meantime). 

This reform aligns Italian legislation with the provisions of the Trade Mark Directive (EU Directive 2015/2436) and makes the Italian trade mark system more modern.

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This note is for informational purposes only, without claiming to be completely exhaustive: we are therefore available to provide you with any further necessary information and assist you in bringing cancellation actions before the Italian PTO.