ITALIAN PTO

OHIM

1. CONDITIONS FOR THE LAWFULNESS OF A LICENCE

Under Italian law, there are no formal requirements for the validity of a licensing contract, which may also be an oral contract.

Analogously, the CTMR does not set out particular formal requirements or conditions for the validity of a CTM licensing contract (as opposed to Art. 17(4) of the CTMR in relation to a CTM transfer), which should be valid under the national law applicable to the contract.

As a general principle, however, trademark licensing agreements must not result in misleading the public in respect of those characteristics of the licensed goods/services that are essential in the public’s appreciation (Art. 23(2) Italian IP Code).

In fact, if a trademark, through the use made of it by a licensee, becomes misleading as to the nature, quality or origin of the goods or services for which it is used, its registration will lapse and may be subject to cancellation (Art. 14(2)(a) and Art. 21(2) Italian IP Code).

No explicit guarantee for consumers as in Italy regarding the lawfulness of licensing contracts in relation to CTMs is provided for.

However, as under Italian law, if the CTM, through the use made of it by a licensee, becomes deceptive, its registration may be revoked (on application to the OHIM or on the basis of a counterclaim in infringement proceedings: Art. 51 (1) (c) CTMR).

In addition, the Italian IP Code provides for an extra guarantee for consumers in the event of non-exclusive licences. In these situations, there will be two or more different businesses putting the same products (or services) on the market under the same trademark.

Consequently, with non-exclusive licence agreements, there is a higher risk of misleading the public, which may find goods on the same market (or on different regional markets, in the event of a territorially limited licence that will however still belong to the same national market) looking identical but possibly differing in quality. Therefore, in order to eliminate (or at least reduce) this risk, in Italy the lawfulness of non-exclusive licenses is made subject to the licensee’s express undertaking to use the trademark only to distinguish goods or services identical to the corresponding goods that are put (or the corresponding services rendered) on the Italian market under the same trademark by the owner or other licensees (Art. 23(2) Italian IP Code).

2. RECORDAL

(i) Necessary documents

For the purposes of recordal at the Italian PTO, a simple declaration, executed by both the licensor and the licensee, which states that the trademark has been licensed and which includes full details of the trademark application(s) and/or registration(s) concerned, is sufficient. Alternatively, the licensing agreement itself can obviously be filed.

In addition, before the recordal of the licence is applied for with the Italian PTO, the above declaration (or the licensing contract itself) must be registered with the competent fiscal authorities (i.e. the Italian Registry Office). For this purpose, the licence consideration, if not included in the licence declaration, is to be stated (Art.196 (1) Italian IP Code).

With reference to the recordal application before the OHIM of a licence for a CTM, the documentary requirements vary and may be less or more formal depending on the person who makes the request.

- In particular, if the owner of the licensed CTM files the application for recordal of the licence, it is not necessary to present a copy of the licence agreement (Rule 33 (1) (b) CTMIR).

- If the request is made jointly by the CTM owner and the licensee, the signature of both (or of their representatives) on the request constitutes proof of the licence;

- while in the event of a request by the licensee alone, proof of the licence must be furnished (through a declaration signed by the trademark owner or a copy of an extract of the licensing contract or a simple statement of licence with the content of the standard WIPO Model international form).

(ii) Costs

Official fees for the recordal of a licence with reference to one trademark before the Italian PTO amount up to around Euro 200 excluding fiscal registration fees.

Official fees for the filing a request for recordal of a licence for 1 CTM at the OHIM (equal to Euro 200).

(i) IN TRADEMARK INFRINGEMENT PROCEEDINGS

According to Italian case law and doctrine, both the trademark holder and the exclusive licensee are allowed to separately instigate infringement proceedings in their own names, unless the exclusive licence agreement precludes the exclusive licensee from doing so.

As a consequence, an exclusive licensee of an Italian trademark will not be allowed to institute proceedings in his own name only if the licence agreement does not allow him to do so or if the trademark owner refuses his request to do so. He may then however sue for damages deriving from the failure to instigate infringement proceedings by the trademark owner, in addition to obviously joining the trademark holder in infringement proceedings.

On the other hand, the case law however poses inconsistent precedents on whether the non-exclusive licensee also has a right to enforce the trademark in its own name. Of course, if the licence agreement specifically entitles him to do so, the non-exclusive licensee may file infringement proceedings. In addition, he may obviously join the trademark holder in infringement proceedings.

Unlike the Italian IP Code, the Community Trademark Regulation contains explicit rules relating to the standing of the CTM licensee in infringement proceedings based on a CTM. In particular, as a general principle, the licensee (whether he has exclusive rights or not) is allowed to bring infringement proceedings only if the CTM owner consents thereto, but an exclusive licensee may in any event bring such proceedings if the trademark owner, after formal notice, does not instigate himself infringement proceedings within an appropriate period (Art. 22(3) CTMR).

In any event, the licensee of a CTM is entitled to intervene in infringement proceedings brought by the CTM owner, for the purpose of obtaining compensation for damages suffered (Art. 22 (4) CTMR).

(ii) IN OPPOSITION PROCEEDINGS

Under Italian law (Art. 177(1) (c) Italian IP Code), only an exclusive licensee may file an opposition in its own name before the Italian Patent and Trademark Office (unless the exclusive licence agreement excludes this).

Under the CTMR, on the other hand, any licensee (exclusive or non) (Art. 41 CTMR) may lodge an opposition upon express authorisation by the CTM owner on the basis of any earlier right within the meaning of Article 8(2) or 8(4) CTMR.

However, an exception is made for oppositions against the filing of a trade mark by an agent in bad faith (Article 8(3) CTMR), which may only be filed by the trademark owner itself and not by the licensee, even though the latter might suffer detriment from such an unlawful filing of a CTM. 

Under Italian law, if a licensee has filed an application in its own name without the licensor’s consent, the licensor cannot oppose the licensee’s application. In the absence of a voluntary cancellation, the only means of attacking on the grounds of bad faith (Art. 19(2) Italian IP Code and Art. 6-septies Paris Convention) will be the filing of a cancellation action before the competent Italian IP Court.

Alternatively, the trademark owner can ask the transfer of the contested application or registration to his own name with retroactive effect on the basis of Art. 118 Italian IP Code.

The CTMR provides for an additional basis for opposition against a CTM application filed by the licensee against the licensor’s will: in particular, in the event of the specific case of bad faith of a licensee acting as an unfaithful agent or representative (Art. 8(3) CTMR; while a claim of bad faith on the part of the applicant may only be raised in cancellation proceedings: Art. 52 (1)(b) CTMR).