• 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 has been 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 and must proceed accordingly within 12 months starting from the date of entry into force of the Law n. 163, i.e. by 21 November 2018.

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

The aim is to align the provisions of the Industrial Property Code with the Directive by expressly withdrawing outdated provisions and by introducing the following changes.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

Opposition procedure 

The opposition procedure will be implemented in order to include new grounds on which an application can be opposed, including the following:

  • Where the application is applied for by an agent or representative of the proprietor in his own name without the proprietor's authorisation;
  • Where the application identical, or similar, to an earlier company name, which causes infringement of the name;
  • Where the application infringes the image or the reputation of a public institution, an authority or body governed by public law.

The changes will also entitle owners of trade marks with a reputation to oppose trade marks and to prevent their use if those signs take unfair advantage of, or are detrimental to, the distinctive character or repute of the well-known trade mark.

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.

Proceedings before the Board of Appeals 

Rules on proceedings before the Board of Appeals against the decisions of the IPTO will be amended and implemented in order to guarantee efficiency and rapidity, with reference also to appeals against decisions on revocation and invalidity.

Implementation of non-use as defense in infringement proceedings 

The defendant will be 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.

Collective, Certification and Guarantee trademarks 

The provisions on collective trade marks will be renewed and updated and certification and guarantee trade marks will also be introduced. Protection of designations of geographical origin will be possible as guarantee or certification marks and collective marks.

It is not anticipated that the new legislation will include any specific guidelines about the requirement of graphical representation of trade marks and the enforcement of trade marks against signs which are not distinctive.

Written by Paola Ruggiero, Alessandra Naia