Italian provisions implementing EU Trademark Directive 2015/2436 came into force on 23 March 2019; the most noteworthy changes essentially strengthen the rights of trademark owners vis-à-vis later trademark applications and registrations in Italy.

The Italian Government has recently approved the legislative decree implementing EU Trademark Directive 2015/2436. The new provisions came into force on 23 March 2019.

The most noteworthy changes, listed and explained below, essentially enhance the rights of trademark owners with respect to later trademark applications/registrations in Italy.

1. Relative grounds for refusal or invalidity

Grounds for opposition against Italian applications now include marks enjoying a reputation, well-known trademarks ex art. 6-bis of the Paris Convention, and designation of origin or geographical indications.

2. Opposition proceedings

The date to be taken into consideration to determine if evidence of use of the prior mark can be requested is now the date of filing or of priority of the opposed application and not the date of its publication.

Some minor amendments concern procedural rules, mainly in connection with suspension and termination of proceedings, as well as the filing of the POA, which must be done within two months from the date of filing of the opposition.

3. “Own name defense”

The so called “own name” defense is now limited to natural persons, who become the only subjects who can rely on the fact that they are using their own name or address in accordance with honest business practices as a defense vis-à-vis infringement claims.

4. Goods in transit

 The implementing law also provides for the possibility to apply customs procedures for the seizure of counterfeit goods in mere transit, unless the trademark owner is not entitled to prevent the marketing of the goods under the law of the country of final destination. 

5. Right to object to preparatory acts of infringement

It is now possible for the owner of the prior trademark to object to the use of identical or similar marks in packaging, labels, tags or authenticity devices when there is the risk that they will be used for violating the trademark rights.

Other changes include: 

Non-graphical representation 

As the trademark is no longer required to be graphically represented, applications for registration of non-traditional signs such as sounds, holograms, animations, motion and multimedia content may be filed in digital formats such as .mp3 and .mp4.

Absolute grounds for Refusal or Invalidity 

The absolute ground of refusal of signs consisting of the shape which results from the nature of the goods or is necessary to achieve a technical result, or which gives substantial value to the goods, has been extended to include “other characteristics”; this absolute ground still cannot be overcome by relying on evidence of acquired distinctiveness.

The following grounds have also been added as absolute grounds for refusal: designations of origin, geographical indications, traditional terms for wine, traditional specialties guaranteed and plant varieties. Third parties’ observations drawing to the Examiner’s attention the conflict with geographical indications are now expressly allowed during examination by the Italian Patent and Trademark Office (IPTO). 

Collective and Certification trademarks

Before the implementation of the Directive, the Italian Industrial Property Code only provided for Collective marks; the reform has introduced the Certification marks, which will thus no longer need to be filed as Collective marks. In parallel, Collective marks have been redefined so as to avoid any overlapping with Certification marks.

According to the implementing law, the owners of Collective marks registered/filed under the previous law must convert them into the newly defined Collective marks or into Certification marks within one year, failing which the marks will be deemed as abandoned.

Licensees’ faculties

The reform now expressly allows the non-exclusive licensee to take action against the infringement of the licensed trademark, albeit only with the trademark owner’s consent, while the exclusive licensee may initiate such proceedings also autonomously, if the owner of the trademark has not started the action despite having been requested to do so. The licensee may, in any case, intervene in the infringement action initiated by the trademark owner to obtain compensation for the damage suffered. 

Nullity/revocation actions

It will be possible to institute actions before the IPTO for nullity or revocation of trademark registrations – but this will require a further decree to be enacted; the deadline set by the European Directive for implementation of these procedures is 14 January 2023.

Board of Appeals proceedings

The reform has introduced the possibility to bring a cross-appeal against the administrative decisions of the IPTO. Now, the partially losing party in opposition proceedings may therefore appeal the unfavorable part of the decision in the same proceedings initiated by the other side, without having to start a separate appeal.

Moreover, the law now provides for the possibility to start, under certain conditions, revocation proceedings against the decisions issued by the Board of Appeal, in addition to the traditional appeal before the Italian Supreme Court.