CTMs AND GENUINE USE IN ITALIAN OPPOSITION PROCEEDINGS - IS USE IN MEMBER STATES OTHER THAN ITALY SUFFICIENT?  

THE ITALIAN PTO CONFIRMS THAT EU BORDERS ARE IRRELEVANT FOR THE PURPOSE OF PROVING GENUINE USE OF CTMs  IN ITALIAN OPPOSITION PROCEEDINGS.

The Italian IP blog Marchi e Brevetti Web (here) with a comment of Professor Stefano Sandri (who also acted as Examiner in the case at hand) here, reports on the first Italian Opposition decision dealing with the issue of evidencing genuine use of a CTM on which a national Italian opposition procedure is based.

In particular, in the absence of any precedents, it has been object of debate in Italy whether the evidence of genuine use of a CTM for the purpose of Italian national opposition proceedings may relate to EU Member States other than Italy only.

In its decision n. 32/2012 (Pepsico Inc. / Perfetti Van Melle S.p.A.), issued on 27 October 2014, the Opposition Division of the Italian PTO has held that the evidence of use provided with reference to Spain and France was sufficient.  This is in line with the unitary character of Community Trade Marks and the approach of the case law of the Court of Justice of the European Union. The decision is available on the Italian PTO website and on darts-ip.