• Opposition procedure: implementation of prior rights to be enforced and mandatory grounds
  • Proceedings for revocation on the basis of absolute grounds/prior rights/relative grounds and lack of genuine use: new administrative procedures before the Italian Patent and Trademark Office ("IPTO")
  • Proceedings before the Board of Appeals against the decisions of the IPTO: to be amended and implemented
  • Infringement proceedings: implementation of non-use as a defence
  • New collective, guarantee and certification trade marks
Status of the implementation into Italian law 

The Italian Government was empowered by Law n. 163 of 25 October 2017, published in the Italian Official Journal on 6 November 2017, to issue the legislation implementing, among others, the Directive.

The main changes the new legislation will imply were set forth by article 3 of Law 163/2017 which provides the guidelines and principles the Government had to follow in implementing the EU provisions into Italian trade mark law.

The aim was to align the provisions of the Industrial Property Code with the Directive by expressly withdrawing outdated provisions and by introducing the following changes.

On February 14, 2019 the Council of Ministers, on the proposal of the Minister of Economic Development, approved in final examination the legislative decree implementing the Directive. The Government Bill regarding the implementation can be accessed here (in Italian). New

New Trademark Definition 

The requirement of a graphical representation has been removed and non-traditional trademarks can be filed.

Opposition procedure 

The opposition procedure has been implemented in order to include new grounds on which an application can be opposed.

It is now possible to base an opposition on earlier trade marks with a reputation. Moreover,  it is also possible to base the opposition on designations of origin and geographical indications.

New administrative procedure 

New administrative procedures will allow proceedings to be brought before the IPTO for revocation or declaration of invalidity of a trade mark on the basis of absolute grounds/prior rights/relative grounds and lack of genuine use: up until now, the Italian trade mark law only allowed for Court proceedings for cancellation/revocation/declaration of invalidity of a trade mark. Claimants will therefore have the choice to follow the administrative or court proceedings, without prejudice to the right of the parties to appeal to the courts. However, these proceedings are not in force yet. The full implementation is to be expected within 2023.

Implementation of non-use as defense in infringement proceedings 

The defendant is entitled to defeat an infringement action for non-use of the proprietor's trade mark during the five-year period preceding the date on which the action was brought, which therefore differs from the counterclaim for revocation which already exists under Italian law, thus modifying the starting point from which the use of the earlier trade mark must be proved.

Different to before, if the non-use defence is raised, the owner of the challenged registration now has the burden of proof that the trademark is in use. 

Collective and Certification trademarks

The provisions on collective trademarks have been amended and a new provision introducing certification marks has been added. 

Licence

According to the new provisions, in case of an infringement, the exclusive licensee is entitled to take action himself, in case the licensor fails to proceed within a reasonable time. The non-exclusive licence, is only entitled to start action against the infringer with the consent of the licensor, unless stipulated otherwise in the agreement.


Written by Paola Ruggiero, Alessandra Naia