FAQ on Italian Trademarks. Part 2

3. Registration 

3.1 What happens when a trade mark is granted registration?
When a trademark is granted the owner can request a paper certificate. The burden of proof on the validity of the sign will be on the side of the alleged infringing company, but on the other side, the trademark should be used within 5 years or will expire.

3.2 From which date following application do an applicant’s trade mark rights commence?
From the day of application, such right can be enforced, but in this case the burden of proof of the validity falls on the owner.

3.3. What is the term of a trade mark?
The term of the trademark is ten years, after which it can be renewed.

3.4 How is a trade mark renewed?
Renewal of a trademark should be requested within 6 months prior to the term and the owner must pay taxes for renewal must be paid prior the application. A late renewal request can be files in the following 6 months, but the applicant will incur in additional taxes.

4. Relative Grounds for Refusal 

4.1 What are the relative grounds for refusal of registration?

Generally, relative grounds for refusal are circumstances such as: signs affecting third party rights or signs consisting of third party names or other identification means or similar to a commercial name; signs identical to or similar to signs already known as a trademark; trademarks notoriously known to the public pursuant to Article 6 bis of the Paris Union Convention for Industrial Property, (as revised in Stockholm on July 14 1967, ratified by Law No. 424 of April 28, 1976).

4.2 Are there ways to overcome a relative grounds objection?

The possible opposition can be overturned by filing written observations or through negotiation and also limiting the appropriate scope of protection of the trademark or classes of products or services, which were indicated in the application. 

5. Opposition

5.1 On what grounds can a trade mark be opposed?

Oppositions may be based either on the absolute grounds for refusal or relative grounds for refusal. They may also be based on unfair competition acts or in case there is no consent by the persons who have the right to the portrait or the family name, requested by art. 8 of the I.P. Code.

5.2 Who can oppose the registration of an Italian trade mark?

Registration can be opposed by the holder of an earlier registered trademark, the earlier applicant for a trademark, the exclusive licensee and the persons who have a right on a similar trademark. 

5.3 What is the procedure for opposition?

Oppositions can be filed within three months since the publication of the trademark on the Official Bulletin. Two months prior to this term, UIBM communicates the existence of the opposition to the applicant and gives the parties a term to file their observations. The opposition is then decided by examiners who did not take part in the examination of the opposed trademark. Against such decision, a party can bring an appeal before the "Commissione Ricorsi", whose decision can be appealed before the Supreme Court only for violation of law or contradictory decision.