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ITALY: ENOUGH NOW! Prior unregistered sign as valid basis for opposition

First decisions of the Italian Opposition Division and Appeals Board holding that the partial renown of a prior, unregistered, sign is sufficient to successfully oppose Italian trademark applications - Some guidance from the Italian PTO and Appeals Board on the concept of “well-known signs” as a valid basis for opposition in Italy.



With its decision of 23 June 2014, the Italian PTO rejected the Italian trademark application MO BAST! (fig.) (meaning ENOUGH NOW!) on the basis of an earlier well-known name: contrary to the first Opposition Division decision issued on the notion of “well-known” sign (reversed in appeal) it was now held to be sufficient that the prior sign is only “relatively” well-known, i.e. amongst a specific consumer range only.


Contrary to the system that is followed by the OHIM and many EU countries, an opposition in Italy can be based, besides on earlier trademarks in force in Italy, also on certain non-registered rights failing prior consent to register them as trademarks, namely:

  • § image rights,
  • § personal name other than the applicant’s name if its use in the trademark may harm the reputation of the person entitled to bear the name,
  • § well-known personal names,
  • § well-known signs used in the artistic, literary, scientific, political or sporting fields, and
  • § well-known names or initials or characteristic emblems of events and of non-profit entities.

(see Article 8 of the Italian IP Code, and Article 8 (3) with reference to well-known names and signs).

In the past, the Italian case law has clarified that the above list is a non-exhaustive list and has adopted a rather broad interpretation of the concept of a “well-known” sign under Article 8 (3). By way of example, the Italian Courts have recognised the title of a well-known movie, the Italian translation of a series, “James Bond agent 007” and the emblem of a political party as being well-known signs used in the field of art, literature and politics, respectively.

Recently, the Italian PTO and the Appeals Board have had the opportunity to pronounce themselves in opposition proceedings based on Article 8(3) and on the extent of renown necessary to qualify a sign as “well-known”.


Decisions of the Italian PTO and the Appeals Board on the notion of “well-known” names /signs

- Opposition Division decision of the Italian PTO of 23 June 2014

In its decision of 23 June this year, the Italian PTO entirely upheld Opposition No 380/2012 that was lodged against the Italian trademark application No NA2011C001388 MO BAST! (fig.) covering education, training, entertainment, cultural and sports activities” in class 41 on the basis of Article 8 (3) of the Italian IP Code.

In particular, the Opponent argued that MO BAST! is the well-known name of a non-profit association founded in the city of Naples in July 2011, with the aim of safeguarding the citizens of Naples and southern-Italy in general against increases in insurance prices. From that date, the sign in question had also been used at demonstrations and public events, as well as on the Internet in order to collect signatures of people supporting a petition addressed to the European Parliament against territorial discrimination by insurance companies in the Campania Region and in order to to increase social awareness on the issue that in southern-Italy car insurance is much more expensive than in the north of Italy.

The mark applied for, filed on 18 October 2011, was identical to the sign on which the opposition was based.

The Opposition Division held that the evidence filed by the opponent (including the registration of the domain name <mobast.org> and a video published on the Internet on 4 October 2011 showing the use of the sign MO BAST! - in a figurative representation identical to the mark applied for - during the collection of 73,000 signatures in Naples, in addition to the petition and documents filed with the European Parliament in December 2011) was sufficient to show that the Opponent’s sign had become well-known, prior to the contested application, amongst a specific range of consumers, in particular in southern Italy, so as to enjoy “relative renown” (“notorietà relativa”).

The Applicant, in its defence, had only filed some Internet links of which the only one still operative showed use of the mark as filed during a meeting in Naples between citizens and various consumer associations but did not give any indications about the ownership of the MO BAST logo.

As a consequence, the Opposition Division held that the Opponent had sufficiently shown that the sign on which the Opposition was based was prior to the identical trademark application, that the sign was well-known and that therefore, in the absence of the Opponent’s prior consent to the registration, the application had to be refused.

- Appeals Board decision of 17 March 2014 (handed down on 12 May 2014)

Previously, the Italian PTO had rejected another Opposition filed on the basis of the claimed existence of a prior well-known sign used in the field of art, holding that “relative renown” was not enough for a sign to qualify as a “well-known sign” under Article 8(3) of the Italian IP Code.

In particular, application No. RM2011C004182 IL MONDO DEI DOPPIATORI (word) (meaning THE WORLD OF DUBBERS) filed in June 2011, had faced an opposition on the basis of an identical sign that had been used since 2002 for the same services and that was held by the Opponent to be a well-known sign used in the artistic field.

However, in its decision of 4 October 2013, the PTO had rejected the opposition on the basis that the prior sign was only relatively well known, i.e. only amongst a specific range of consumers operative in the particular sector, namely of voiceovers, and that “relative renown” was not sufficient to qualify the mark as “well-known” pursuant to Article 8 (3) IP Code.

The appeal (which was upheld) that was lodged against this decision before the Appeals Board stated that it is sufficient that the sign is well-known in a specific and territorially limited field, and not the entire national territory, and this despite the fact that nowadays Internet provides universal diffusion and knowledge. Consequently, the “relative renown” of the sign was held sufficient to qualify the sign as “well-known” pursuant to Article 8 (3) IP Code so that the Appeals Board allowed the opposition, rejected the application and ordered the Applicant to reimburse 1000 Euros legal costs to the Opponent.

As a consequence, the Italian PTO appears to have now adopted a broad interpretation of the notion of “well-known” sign, in line with Italian case law, which will make it easier to win oppositions in Italy on the basis of unregistered signs.

Posted by: Edith Van den Eede @ 13.37
Tags: italy, Italian PTO, Appeals Board, opposition division, unregistered signs, well-known, partial renown, relative renown ,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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