Manuela Bruscolini of the MARQUES International Trade Mark Law and Practice Team analyses the new administrative procedure for invalidity and revocation of trade marks in Italy.

As of 29 December 2022, it is possible to file an action for invalidity and revocation against registered trade marks before the Italian Patent and Trade mark Office (UIBM) through an administrative procedure.

The launch of this new administrative procedure in Italy was made possible following the publication, in the Official Gazette number 279 of 29 November 2022, of Decree Number 180 of 19 July 2022 issued by the Ministry of Economic Development (now Ministry of Enterprises and Made in Italy).

A big change for Italy

This is one of the most significant innovations deriving from the implementation into national legislation of the European Directive 2015/2436 of 16 December 2015 (the so-called trade mark reform package). It will change the view of intellectual property in Italy.

Until now, invalidity and revocation actions in Italy could be instituted exclusively before the judicial courts.

The Trade Mark Directive had given the EU Member States a very long deadline (January 2023) to adopt the organisational measures necessary to implement this new procedure and each State of the European Union took action to meet the prescribed term.

In Italy, the procedure for invalidity and revocation of trade marks is indeed regulated in detail in the new Section II bis "Revocation and invalidity of registered trade marks" of the Industrial Property Code with the new articles 184 bis and following. However in practical terms this procedure has not been yet been possible, since there was no implementing regulation that would make it operational. That has now finally been adopted.

Simpler and quicker

The introduction of these administrative procedures has the aim of simplifying and accelerating the resolution of disputes relating to the revocation and invalidity of a trade mark and in this way allowing rights holders, and in particular SMEs, to obtain protection in shorter times, with lower costs and through simplified procedures, while promoting greater legal certainty.

While traditional judicial procedures are still possible, since 29 December the new administrative procedures has become an alternative tool promising to be more streamlined and of shorter duration (two years, subject to any suspension periods) as compared to the judicial route.

How to start an action

In short, a revocation action can be started when:

a) the registered trade mark has become a generic name of the product or has lost its distinctive capacity due to the trade mark owner’s behaviour;

b) due to supervening deceptiveness, the trade mark has become misleading;

c) there is non-use of the trade mark.

An invalidity action can be started when:

a) the trade mark should not have been registered as it does not comply with the registration requirements;

b) there is an earlier right;

c) the application for trade mark registration was filed by the agent or by a representative without the owner's consent.

For example, the above actions can prove useful in cases where it is necessary to "clear the field" to ensure the opportunity to use a sign that has not been available up to now or in cases where it has not been possible to act before registration by submitting an appropriate opposition within the prescribed terms.

Careful evaluation

Although the new structure provides for the coexistence of the two alternative routes, i.e. judicial and administrative, the opportunity to opt for one or the other will have to be evaluated carefully according to the specific circumstances of the case and the desired result.

Manuela Bruscolini is a European trade mark attorney with Interpatent in Turin and a member of the MARQUES International Trade Mark Law and Practice Team