20 May 2016Jurisdiction reportsMauro Bronzini

Italy: protecting unregistered signs in opposition proceedings

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.

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