FRIDAY, 30 MARCH 2012
Differences between Italian and CTM opposition procedure

 

The Italian opposition proceedings being introduced fairly recently (see earlier CLASS46 post of 23 June 2011 here; the first decisions are expected to be issued in June this year), were very much inspired by the analogous OHIM procedure.

 

In an attempt to have the Italian procedure understood by the readers at a glance, this blogger made up the following chart, highlighting the main differences between both procedures.

 

 

SUBSTANTIVE DIFFERENCES

Grounds

- Identical or similar TMs covering identical or similar g/s (double identity or LoC);

- Certain unregistered rights failing prior consent (i.e. a right to a portrait, personal names, well known signs used in the artistic, literary, scientific, political or sporting fields).

- Identical or similar TMs covering identical or similar g/s (double identity or LoC);

- Rights arising from signs used in the course of trade of more than mere local significance (e.g. a right to a name, a right of personal portrayal, copyright, other industrial property right);

- Earlier TMs with a reputation registered for dissimilar g/s but

use of CTM application takes unfair advantage of/is detrimental

to earlier TMs’ distinctive character or repute;

-Owner of TM filed by agent without owner’s consent.

Divergent case law

- Defensive marks

- Confusion assessment by case law?

- No defensive marks

- Confusion assessment by case law?

PROCEDURAL DIFFERENCES

Who may lodge opposition

- Owner

- Exclusive licencee

- Owner

- Licencee (exclusive or not) if authorized by owner

Amount of Fee

€250

€350

Payment of fee

Prior to lodging opposition and proof to be attached to opposition notice

Within opposition deadline

Means of payment

Through post office

Transfer or through OHIM account

PoA

yes (simply signed)

no

Means of filing

Certified e-mail, certified mail or in person at Italian PTO

In person, by mail, fax, telex, telegram or through E-opposition

Deadline for filing against IR

3 months commencing on the first day of the month following publication in the WIPO Gazette

Between 6th and 9th month following the date of first republication.

Search report

no

Community search report (notice sent to holders of earlier CTMs cited)

Cooling-off period (COP)

max 12 months

max 24 months

POU defence

to be submitted within 60 days from notification to do so

to be submitted within 2 months from notification to do so

Possibility oral hearing

no before Italian PTo

theoretically, yes

Decision

Within 24 months from filing opposition

Not specified

Refund fee

Parties reach a settlement in COP and Office is informed accordingly

If in COP the opposition is closed by a withdrawal or restriction of the list of g/s against which opposition is based

Choice of forum

- Instead of lodging opposition, the claimant may also directly go to Court.

- Revocation and Invalidity actions only before the Court (for invalidity also against a pending application).

- Opposition can be conducted only before the Office

- Revocation and Invalidity action before the Office

(only against registered CTMs).

Posted by: Edith Van den Eede @ 15.02
Tags: Italy, opposition, CTM, difference, OHIM, trade mark,
0 Comments    Post a comment