! BREAKING NEWS ! The new administrative procedure of invalidity and revocation of Italian registered trademarks is set in motion

As of December 29, 2022, it will be possible to file directly with the Italian Patent and Trademark Office (UIBM) the invalidity and revocation applications against the registered Italian trademarks by seeking their cancellation due to the original lack of the law requirements (invalidity) or the declaration of revocation due to the occurrence of circumstances that have compromised the originally valid right (revocation).

The effect has been confirmed by the publication on 29 November 2022 of the Decree of the Ministry of Economic Development (No. 180 of July 19, 2022) and by the guidelines issued by the Italian PTO a few days ago.

The Decree establishes the rules for the application of the new procedure by modifying the Regulations for Implementation of the Italian Industrial Property Code and thus completing the reorganization of the trademarks administrative procedures initiated with the entry in force of Legislative Decree No. 15/2019, which applied Directive (EU) 2015/2436, to approximate the laws of the Member States relating to trademarks.

The new procedure will be a very useful tool to obtain the declaration of invalidity or revocation through an administrative action, lightening the workload of the Italian Courts. Therefore, it will be a fundamental and effective alternative to the ordinary court proceedings, entailing significantly less costs and time.

The administrative procedure is in fact simplified and shorter, but at the same time it will allow a thorough assessment of the case by means of two briefs for each party and, in some cases, by means of the request of the proof of use of the earlier mark on which the invalidity action is based.

The new administrative procedure can be launched either due to original lack of statutory requirements (so-called invalidity of the trademark) or due to the occurrence of circumstances that have undermined an originally valid right (so-called revocation of the trademark).

There are hence many grounds on which the new administrative procedure can be based.

As to the invalidity actions, on the one hand there are absolute grounds for trademarks that were already at the filing date of common use in language, generic or descriptive of the goods and services to which they refer, contrary to the law, public order or morality, or likely to deceive the public, or for trademarks that were in conflict with earlier designations of origin and geographical indications, traditional mentions for wines and plant varieties.

On the other hand, there are relative grounds, which allow the owner of earlier rights to seek the cancellation of trademarks conflicting with earlier identical or similar trademarks (also for different goods and services, in the case of trademarks with reputation) or with unregistered but well-known trademarks under Article 6bis of the Paris Convention.

As to the revocation actions, they will allow instead to obtain the cancellation of registered trademarks when they no longer meet the validity requirements they originally had, since they became commonplace or deceptive, or are no longer in use.

As a matter of fact, the possibility to obtain the revocation for non-use seems to be the most significant change, also considering that the proof of use will be entirely on the holder of the challenged trademark registration.

Therefore, it is to be expected that extensive use will be made of these new administrative procedures, particularly to expunge from the register obsolete and no longer used trademarks.

In any case, there remain several differences between the administrative procedure and the ordinary court action, to which is in fact reserved a broader scope.

For example, it will not be possible to base an invalidity action for relative grounds on the so called unregistered trademarks (marchi di fatto, in Italy, i.e., trademarks that are used but not registered), nor on other unregistered signs other than trademarks, such as name rights, image rights, copyrights, or other industrial property rights, such as designs.

Furthermore, the administrative route will obviously not allow to seek injunctions against use or damages, for which it will be still necessary to establish a judicial proceeding.

Therefore, both the (traditional) judicial and (new) administrative actions should be carefully assessed in each case to decide which one would be the most appropriate in the specific case.

We are facing a momentous revolution in the Italian trademark system that will ensure greater efficiency and cost savings for companies, that will however require assistance of legal practitioners accustomed to deal with both administrative and judicial procedures.

Do not hesitate to get in touch with us to assess which of the two routes best suits you and your clients.

Laura Sist

Andrea De Gaspari