The new procedure for trademark invalidity or revocation before the Italian Patent and Trademark Office

By Decree no. 180/2022 of the Ministry of Enterprise and Made in Italy, the new procedure for the invalidity or revocation of a registered trademark before the Italian Patent and Trademark Office was defined. This procedure, which will come into force on 29 December 2022, will complement the existing procedure before the judicial authority.

The procedure must be initiated by means of a substantiated application, complete with all the necessary documentation as the latter may not be filed at a later date. The grounds for the application may be:

• For revocation:

  • supervened loss of distinctiveness;

  • supervened deceptiveness;

  • non-use;

• For invalidity:

  • lack of distinctiveness, unlawfulness, breach of law, public order or morality, or deceptiveness;

  • identity/similarity with the applicant’s trademark and related goods and/or services;

  • registration requested by the agent or representative without the owner’s consent or a justified reason.

Each application can relate to only one request, i.e. requests for both invalidity and revocation cannot be included in the same application, and requests against several registrations of the same owner cannot be filed in the same application, unlike what might occur in ordinary proceedings.

The procedure will be structured in a similar fashion to the opposition procedure: following the cooling-off period, with the possibility of reaching a settlement agreement, the adversarial phase will begin with briefs from the owner and the applicant and the possibility of requesting and filing proofs of use. At the end of the procedure, if the Office upholds the application, it will determine the revocation or invalidity of the trademark, in whole or in part, with effect erga omnes. The revocation will take effect from the filing date of the application or, at the applicant’s request, from the earlier date on which the ground for revocation occurred; the invalidity will instead take effect directly from the date of registration of the trademark.

An appeal against the decision of the Italian Patent and Trademark Office may be submitted to the Board of Appeals within 60 days of receipt of the decision.