Italy: protecting unregistered signs in opposition proceedings

20-05-2016

Mauro Bronzini

The administrative opposition procedure for national trademark applications (introduced in 2011) provides two grounds for opposition.

One is the conflict with an earlier registered trademark for identical or similar goods and services. There are plenty of decisions and a certain degree of predictability surrounding this ground.

The second ground, unexplored until now, is governed by article 8 of the Industrial Property Code (IPC). It allows oppositions on the basis of portraits (intended as the image of a person), personal names different from the name of the trademark applicant, and well-known signs. More specifically, the ground of opposition in these cases is the absence of the consent of the rights owner.

While there is apparently no record of oppositions based on portraits and personal names, there are a few cases in which the Italian Patent and Trademark Office (UIBM) has had to deal with well-known signs. In order to avoid misunderstandings, it is worth underlining that we are not talking about well-known trademarks contemplated by article 6bis of the Paris Convention, or trademarks with a “reputation”.

Instead, well-known signs eligible to constitute the basis for an opposition are personal names, signs used in art, literature, science, politics and sport, the names and acronyms of exhibitions and non-profit organisations, as well as their distinctive emblems.

Some decisions have underlined that the protection afforded to well-known signs is different from the typical protection reserved for trademarks. The latter is traditionally based on the distinctive character of the trademark and the existence of a risk of confusion concerning the origin of the goods/services.

Article 8 of the IPC aims at protecting rights owners against the parasitical exploitation of the commercial value incorporated by the sign. In other words, the distinctive function blurs compared to the exclusive protection granted to the rights owner against the unfair advantage sought by the trademark applicant.

Mixed results

Considering the small number of decisions adopted until now by the UIBM in this matter, some issues are still controversial.

"Some decisions have underlined that the protection afforded to well-known signs is different from the typical protection reserved for trademarks."

For example, in one case the opposition was rejected because the signs were not exactly identical (‘Sanremodoc’/‘Sanremoinfiore’/‘Sanremolab’ versus ‘Sanremorock’). However, in another case the UIBM accepted an opposition based on the sign ‘Oxford’ against an application for the trademark ‘Oxford For Young Learners’ with device.

In some other issues the approach of the UIBM is more straightforward. An example is the interpretation of the well-known character of the opposing sign.

In a case concerning the sign ‘Il Mondo Dei Doppiatori’ (‘the world of dubbers’), the UIBM rejected the opposition, arguing that the evidence submitted by the opponent had not achieved the threshold necessary to substantiate a nationwide well-known character. The documents filed consisted mainly of extracts of the opponent’s website, some press articles, a Facebook page, and a couple of statements issued by organisations involved in dubbing exhibitions.

The UIBM’s decision was challenged before the Board of Appeal, which observed that the sign must be well-known in a specific sector, not necessarily in the whole national territory. Considering that the opponent had proved his attendance (with the sign ‘Il Mondo Dei Doppiatori’) at exhibitions and events specifically focused on the dubbing sector, the board recognised that the sign had achieved a degree of fame sufficient to comply with the requirements of the law, accepted the opposition and rejected the trademark application. This broader approach has been adopted in other decisions.

Summing up, the opposition proceeding in Italy offers a relatively broad protection to some unregistered signs, as contemplated by article 8 of the IPC. Although they are recognised by law, other signs, in particular unregistered trademarks, can be enforced only by means of judicial invalidity proceedings before courts, not in the UIBM’s administrative procedure.

Mauro Bronzini is an Italian and European trademark and design attorney at Bugnion. He can be contacted at: bronzini@bugnion.it 

Mauro Bronzini, Bugnion, IPC, Italian Patent and Trademark Office, designs, trademark, Board of Appeal, application,

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