On December 29, 2022, Decree No. 180 of July 19, 2022, introducing amendments to the Code of Industrial Property concerning the proceedings for nullity and forfeiture of trademarks, entered into effect in Italy.

General Context

Decree No. 180 contains amendments to Decree No. 33 of January 13, 2010 that approve the regulations implementing the Code of Industrial Property. Decree No. 180 was issued as part of the reform of the industrial property system envisaged by Milestone M1C2-4 of the PNRR (Italian Recovery Fund) and in line with the “intellectual property action plan to support the European Union’s recovery and resilience” adopted by the European Commission in 2020.

The main objectives of the reform are strengthening the national system for protecting industrial property, administrative simplification, and digitizing procedures regarding industrial property titles.

Registration and Publicity Requirements

Decree No. 180 includes acts related to the final revocation and nullity of those registered trademarks that must be published in the Bulletin of Trademarks. (Decree No. 33, art. 44, para. 1(c-bis), added by Decree No. 180, art. 1(1).)

Decree No. 180 also adds certain individuals to the lists of those having standing to apply to the Italian Patent and Trademark Office to verify a validly registered trademark’s invalidity or revocation, or both. (Decree No. 33, art. 63-bis(1), added by Decree No. 180, art. 2(1).) Decree No. 180 identifies the documentation that applicants must submit with their requests, which includes information on the registered trademark, nationality and other personal data of the trademark holders, and the reasons for the request. (Decree No. 33, art. 63-bis(2), added by Decree No. 180, art. 2(1).) Additional information is necessary when the application is based on the existence of a previous trademark or right. (Decree No. 33, art. 63-bis(3), added by Decree No. 180, art. 2(1).)

Verification of the Admissibility of a Request

Upon receiving the request, the Patent and Trademark Office is to perform an admissibility review, which pivots around the payment of the deposit rights by the interested party. (Decree No. 33, art. 63-quater(2), added by Decree No. 180, art. 2(1).) Inadmissibility grounds include, among others: (a) a nonexistent or an invalid registration at the time of the request, (b) lack of identification of the trademark or its holder, (c) existence of a previous right, (d) lack of use as required by law, or (e) the request being directed against a plurality of registrations. (Decree No. 33, art. 63-quater(3)–(4), added by Decree No. 180, art. 2(1).)

Adversarial Procedure

The Patent and Trademark Office must provide notice of the request to the other party interested in the trademark, indicating the possibility of following conciliation procedures within two months from the request, extendable up to one year. (Decree No. 33, art. 63-quinquies(1), added by Decree No. 180, art. 2(1).) If conciliation fails, the trademark holder must provide a written response to the applicant’s request. (Decree No. 33, art. 63-quinquies(2), added by Decree No. 180, art. 2(1).) The applicant has 60 days to file a reply against the holder’s response. (Decree No. 33, art. 63-quinquies(3), added by Decree No. 180, art. 2(1).)

Evidentiary Stage

The Patent and Trademark Office may receive evidence offered by the parties or may ex officio order other evidence. (Decree No. 33, art. 63-sexies(2), added by Decree No. 180, art. 2(1).) If the respondent fails to produce the required evidence after being requested to do so by the Patent and Trademark Office, the office is to issue a decision in favor of the applicant. (Decree No. 33, art. 63-septies(2), added by Decree No. 180, art. 2(1).)

Other Procedural Innovations

Decree No. 180 adds other procedural innovations, including the possibility of the Patent and Trademark Office ordering the suspension of the procedure of revocation or nullity. (Decree No. 33, art. 63-octies(1), added by Decree No. 180, art. 2(1).) In such a case, the procedure is suspended for a maximum term of three months. (Decree No. 33, art. 63-octies(4), added by Decree No. 180, art. 2(1).)

Provisions on the transparency and publicizing of the procedures to third parties are also included. The decree establishes the modalities for accessing and extracting a copy of the documentation contained in the file relating to the application for revocation or nullity. (Decree No. 33, art. 63-nonies(1), added by Decree No. 180, art. 2(1).)

Decision of the Patent and Trademark Office

The office must issue a decision within 24 months from the date of the request, excluding suspension periods. (Decree No. 33, art. 63-decies(1), added by Decree No. 180, art. 2(1).) In its decision, the office is to set forth the payment of attorney’s fees, with a cap of 600 euros (about US$649). (Decree No. 33, art. 63-decies(2), added by Decree No. 180, art. 2(1).) The parties are to be notified of the final decision, which becomes public. (Decree No. 33, art. 63-decies(3) & (4), added by Decree No. 180, art. 2(1).)

Dante Figueroa, Law Library of Congress
February 8, 2023

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