The new administrative procedure for invalidity or forfeiture of trademarks

27 Gennaio 2023
Thanks to Angelo Aimar  for collaborating on this article

As of December 29, 2022, the new administrative procedure provided by Italian Ministerial Decree No. 180 of July 19, 2022 (“Decree”) for obtaining nullity or forfeiture of Italian registered trademarks entered into force, along with its standard judicial procedure.

This new procedure aims to streamline the proceedings, speed up the timeline, and lower the cost of obtaining a declaration of invalidity or forfeiture of a trademark in Italy.

To that end, the Decree introduces new articles and certain key changes to the Executive Regulation of Legislative Decree No. 30/2005, establishing the Industrial Property Code (see Art. 63-bis and following). Unlike the standard judicial procedure, the new administrative procedure must be undertaken before the Italian Patent and Trademark Office (“IPTO”), which, after verifying admissibility of the application, will set a two-month deadline for the parties to reach a conciliatory agreement. That deadline may be extended several times up to one year upon joint request of the parties. If no agreement is reached, the IPTO shall give the owner of the challenged trademark sixty days to file a statement. At this stage, the parties will also have to file proof of use of their trademarks, if required. The proceeding must be concluded within a maximum of twenty-four months from the date the application is filed, including the conciliation period.

If a judicial procedure involving the same subject matter and parties is undertaken simultaneously or subsequently to this administrative procedure, the latter will be suspended by the IPTO. However, if a decision has already been reached on the matter or there is already a pending administrative or judicial procedure, a request for another administrative decision on the same subject matter and involving the same parties will be declared inadmissible.

Decisions of the IPTO may be appealed before the Board of Appeals according to Article 135 of the Industrial Property Code. If an IPTO decision is not appealed, it becomes final and has erga omnes effect. Pursuant to Article 184-sexies of the Industrial Property Code, once an IPTO decision is final, the forfeiture of a trademark takes effect from the date the application for forfeiture is filed or, at the request of the applicant, from an earlier date on which one of the grounds for forfeiture occurred. However, the invalidity of a trademark takes effect from the date of registration of the trademark declared invalid.

In conclusion, this reform strengthens the protection of trademark rights in Italy, offering a new rapid and effective procedure for trademark owners to protect their exclusive rights by having invalid trademarks and trademarks forfeited due to non-use removed from the Italian trademark register. Of course, in more complex cases—for example, if a trademark owner seeks an injunction against use or compensation for damages—a standard lawsuit will be necessary. The choice of procedure (administrative procedure versus lawsuit) should be assessed on a case-by-case basis.

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