Opposing trademarks in Italy


Sonia Fodale

Most EU countries have administrative procedures that allow trademark registrations to be opposed but, until recently, Italy did not.

This is despite the fact that an opposition system is provided for in the current intellectual property (IP) Code, which has been in force since 2005.

The procedure remained a dead letter because the implementing regulation had never been enacted and a system to publish trademark applications had never been put in place. The only way for the owner of an earlier right to challenge a trademark application was to commence a cancellation action through ordinary courts in Italy.

The opposition procedure has finally become a reality. In 2010, the implementing regulations of the IP Code were enacted. On May 11, 2011, the Ministry for Economic Development passed the longawaited Opposition Decree, a further regulation detailing, inter alia, the timetable for implementing the opposition procedure. The procedure for opposition against the registration of trademarks finally became available in Italy in July 2011.

Oppositions, UIBM, community trademarks, domain names, opposing marks