INVALIDITY AND REVOCATION IN ITALY

Starting from 29 December 2022, a new procedure was introduced in Italy for declaring the invalidity and revocation of a company trademark registered in Italy.

Starting from that date, alongside the traditional judicial procedure (in the Courts specialized in Company Law), it is possible to start a procedure directly at the Italian Patent and Trademark Office to request the invalidity or revocation of a registered trademark.

Our company Gallo & Partners through its team of qualified consultants has the skills and qualifications to represent you before the Italian Patent and Trademark Office for such procedures for ascertaining the invalidity and revocation of registered trademarks.

A similar procedure is already available for European Union trademarks at the EUIPO, and has the objective, which can now also be reached in Italy, of speeding up and simplifying disputes relating to registered trademarks without the need to enter a Judicial lawsuit. This new procedure for cancelling a trademark in Italy will guarantee a faster timing than those required for a trial before the ordinary judge (in fact, the UIBM will issue the decision within 24 months of filing the cancellation request) and much lower costs.

More in detail, nullity can be asserted for:

• absolute grounds
• relative grounds

The absolute grounds, substantially, are the lack of distinctive capacity, the deceptiveness of the trademark and, in accordance with the new Directive, the interference with Designations of Origin and Indications Geographical terms, traditional mentions for wines, traditional specialties guaranteed (TSG) and vegetable varieties.

The relative grounds concern the existence of earlier rights on the same trademark and can only be enforced by the holders of the aforementioned earlier rights.

With regard to the revocation, it can be claimed for:

• registered trademarks whose use has been interrupted for 5 consecutive years;
• registered trademarks that have become descriptive or popularized;
• registered trademarks that have become deceptive and misleading;