fotonium-shutterstock-com-1
30 November 2015TrademarksLuigi Manna

Trademark reform in Italy: a shift in focus

After years of discussion, European trademark reforms should become a reality in the next few months. In June 2015, the European Parliament’s Committee on Legal Affairs endorsed the compromise texts of the European Council’s Committee of Permanent Representatives for the trademark reform package, which concerns Directive 2008/95/EC (the trademark directive) and Council regulation (EC) No. 207/2009 (Community trademark regulation). The council adopted its position at first reading on the reforms on November 10, and the package is expected to be put to a second-reading vote at a plenary session of the Parliament.

The reform package has many ambitious goals and touches not only on substantive law, but also procedural rules. One of the many changes, which is part of the proposal for a recast of trademark directive, is member states’ obligation to provide an administrative procedure for revoking or declaring invalid a trademark before their national intellectual property offices (article 47 of the proposal). Although it can hardly be said that this change is just around the corner—member states will have seven years from the entry into force of the directive to implement it into national law—it is worth taking a look at it from the perspective of Italian law.

Until 2011 in Italy, the law required without exception the filing of a lawsuit before a court in order to revoke and declare a trademark invalid. In 2011, opposition procedures (which are administrative in nature) were finally introduced, meaning published trademark applications can be opposed before the Italian Patent and Trademark Office (UIBM), but only on a limited number of relative invalidity grounds (earlier rights arising from unregistered trademarks, company or domain names, and well-known trademarks are excluded). Once the new directive provisions are implemented into Italian law, the UIBM will be able to handle the whole range of invalidity grounds (both absolute and relative), as well as revocation actions against granted trademarks. For Italy, this is a significant shift.

The declared intent of this particular item of the European reform is to make trademark revocations and declarations of invalidity more expeditious and less costly. I have experienced more than once, as has any Italian IP lawyer, the discomfort of foreign clients and lawyers in learning that even for the most straightforward cases of trademark invalidity or revocation they have to seek representation from a qualified lawyer and face costly and lengthy trademark litigation (although the main IP courts in Italy are becoming increasingly quick and effective). The question is whether, as far as Italy is concerned, the change will in fact achieve the desired results.

Will it work?

It is safe to assume that the existing opposition procedure before the UIBM, which in turn has been modelled on the one at the Office for Harmonization in the Internal Market (OHIM), will serve as a model for the new procedures, at least in general terms. So what are its distinguishing features?

For a start, it does not mandatorily require representation by a qualified lawyer: the people entitled to file an opposition can choose to represent themselves, unless they are based abroad (however if they choose otherwise they must hire a qualified lawyer or trademark agent).

There is no oral hearing: everything is in writing. As a general rule, the parties submit one single brief each where they disclose all their arguments, in contrast to the several briefs required by ordinary court proceedings. All filings can be done through (certified) email or fax. The office’s fees and cost awards are limited, and not remotely comparable to those of court proceedings.

The casual observer might conclude that the reform will make trademark revocation and invalidity in Italy an expedited and less costly business. But things are not always as they appear. Even if there is no question about the relative inexpensiveness of these administrative proceedings, there are other aspects that need be taken into consideration.

First, there is the issue of alleged faster speed, which is at odds with my own and colleagues’ experience. A random look at the UIBM opposition decisions database confirms that experience, showing that most decisions handed down by the office in 2015 refer to oppositions filed in 2012—three years before. This is as long or longer than it would take most Italian IP courts to deal with any trademark lawsuit, even the most complex one.

“The government should allocate funds to modernise UIBM’s structure, in particular by bringing all procedures up to date with the latest technologies.”

That is not all. The UIBM does not have, to date, a system in place where the parties can remotely access each other’s briefs and documents in real time. Each party sends its own papers to the UIBM, which then transmits them to the other party. But the UIBM is not particularly efficient at that, and I personally know of a few cases where, for example, the opposing party has been left for months to wait to receive the trademark applicant’s reply.

This is in stark contrast to the current functioning of the Italian court system where, after years of stagnation, the whole system has made a giant leap forward by implementing ‘e-proceedings’, where virtually all papers can be filed and retrieved electronically using digital-signature technology, and the parties are notified in real time of any filings or court decisions.

There is also the issue of quality—of defence and decisions, which I firmly believe affect each other. As for the latter, so far the office has done fairly well in dealing with a limited spectrum of opposition grounds, which tend to repeat themselves. But the expertise required to provide good invalidity and revocation decisions, and to handle complex claims and evidentiary issues, is much higher.

As for the quality of defence, I am wary of self-representation in IP matters. I am all for cost-effectiveness, but I am also a strong believer in specialisation and experience. Over the years I have read or heard my fair share of hair-raising defences put forward by non-IP specialist professionals; at times colleagues who would otherwise be good or even extremely good in their own area of expertise. If the quality of defence can plummet when a good lawyer tests him or herself in the uncharted waters of trademark law, one can only wonder what can happen when those same waters are sailed by people who have no experience either with trademarks or legal proceedings when the UIBM is trusted with the whole package of revocation and invalidity actions.

One good thing I can say about UIBM decisions four years after the opposition procedures were introduced is that they do provide two coveted qualities: standardisation and predictability. When reading the latest UIBM decisions, one gets the distinct feeling that they are modelled on OHIM’s—not just regarding the substantive principles, but the reasoning process as well.

Standardisation and predictability are good for business. I am not sure Italian courts’ case law will ever provide those qualities. Italian judges are very prepared, especially so after specialised IP courts were established in 2003, but they are also very proud of their intellectual independence. They do not follow standards.

What are my final thoughts on the proposed reforms? I think they can work under certain conditions. In the years before their actual implementation, the government should allocate funds to modernise the UIBM’s structure, in particular by bringing all procedures up to date with the latest technologies. The office’s staff must be more than proportionally increased or it will suffocate under the sheer number of procedures that will be filed and will not be able to provide acceptable reaction times. Invalidity and revocation divisions will have to be set up and mandatorily staffed with highly qualified personnel, including, for example, retired judges and trademark lawyers or agents.

As for representation, my hope for the implementation of these reforms in Italy is that corporations that do not wish to appoint outside attorneys (be they trademark agents or IP lawyers) for revocation and invalidity proceedings before the UIBM will at least consider hiring permanent in-house specialists. This, of course, would make sense only for corporations that can expect a sufficient critical mass of trademark procedures to justify the costs of such a hiring policy. To all others, I would repeat an old joke that seems especially relevant: the man who represents himself has a fool for a client.

Luigi Manna is a founding partner at  Martini Manna Avvocati in Milan. He can be contacted at: luigi.manna@martinimanna.com

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Jurisdiction reports
29 October 2020   For international patent applications filed before July 1, 2020, the only way to obtain patent protection in Italy was to pass through a European patent application.
Jurisdiction reports
10 January 2021   Trademarks and advertising are often synonymous with communication. Since they usually transmit a message to consumers, it is necessary that this message respects its recipients’ feelings. In other words, trademark owners and advertisers must be in compliance with rules of public morality.
Jurisdiction reports
29 March 2021   When confronted with the question of whether a technical solution infringes a patent, it is crucial to assess the scope of protection of the patent.