Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.
Click here subscribe for free.
Who we all are...
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). |
Tags: Italy, opposition, CTM, difference, OHIM, trade mark,
Sharing on Social Media? Use the link below...Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA2781
