1 year after the introduction in Italy of the trade mark opposition proceedings, the first Italian opposition decisions are now expected.

Despite the fact that there are certain limitations to the Italian opposition system, the figures so far show that the new system has turned out to be an ideal tool for exerting pressure in order to swiftly achieve the desired outcome. Many conflicts have indeed been solved amicably and according to Italian PTO sources, about 10% of all the oppositions filed so far have already been concluded (without reaching the examination and decision stage). In this blogger’s experience, about 45% of trade mark conflicts are settled before or during the cooling-off period, or even before the opposition deadline.

Some statistics on the oppositions filed to date in Italy:

NUMBER OF OPPOSITIONS FILED: over 1,400

MARKS AGAINST WHICH OPPOSITIONS ARE FILED:

• 96% against Italian trade mark applications
• 4% against International registrations designating Italy

GROUNDS FOR OPPOSITION:

• 99% of the Italian oppositions are based on earlier trade mark rights: roughly:
• 39% on Italian trade marks
• 49% on CTMs
• 11% on International registrations designating Italy or the EU

• 1% are based on other earlier rights that may be used as opposition grounds in Italy (such as: image rights; well-known personal names, well-known signs used in the artistic, literary, scientific, political or sporting fields)

The national applications (as well as the so-called provisional registrations) against which an opposition may be lodged in Italy, are published in monthly Bulletins, available on http://www.uibm.gov.it/uibm/dati/bollettino.aspx?123,10. International registrations designating Italy are not re-published.