Italian trademarks : Opposition proceedings in force


The filing of an opposition against an Italian trademark or an Italian part of an International trademark is henceforth possible since July 2011.

These proceedings take place before the Italian Office of Patents and Trademarks (<link http: external-link-new-window>UIBM).

Thus, proprietors of prior rights can file an opposition during 3 months as from the publication of the trademark application within the Official Gazette of Italian Trademarks.

UIBM will have 2 months to examine the admissibility of the opposition. If the opposition is receivable, a “cooling off” period of 2 months will start. During this phase, parties can conclude an amicable agreement.

The parties will be able to extend this period until 12 months.

If negotiations between parties fail, the adversarial part of the proceedings will start and the applicant will have 60 days to file its arguments in response to the opposition. Moreover, the defender can also request evidences of use of the prior trademark.

UIBM must take a decision at the latest 24 months after the filing of the opposition.

The losing party will have 60 days to file an appeal in order to contest the decision of the UIBM. 

Proceedings vary a little regarding Italian parts of International trademarks since the delay to file an opposition is 3 months as from the first day of the month following their publication in the Gazette of the WIPO.  

These new proceedings of opposition are really similar to the Community proceedings, notably regarding the establishing of a “cooling-off” period. 

Indeed, these measures allow facilitating the supervision of the new Italian applications by prior trademark proprietors located abroad and potential actions of the latter.