The aim of these articles is to keep our Clients and Associates updated about developments in the sector of Intellectual Property in general and our firm in particular. In this way, we wish to provide a broader view of the tools that the field of trade marks, domain names, patents, designs and related rights offers to entrepreneurs to enhance and protect their efforts in researching and developing new solutions and ideas.
It’s Never Too Late: The Importance of Trademark Searching in the Light of Invalidity Actions
What happens when the owner of an Italian trademark application or registration becomes aware of the existence of third parties’ identical or similar trademarks which were filed later than their own, but the term for filing opposition has already expired?
As you may know, Italian trademark applications, after having been examined by the Italian Patent and Trademark Office, are published in the Italian Trademark Bulletin. Publication of the trademark application triggers a three-month period in which owners of prior identical or similar trademarks can file opposition requesting the Office to reject the application.
Non-submission of oppositions within this term results in the trademark being registered (provided, of course, that there are no absolute grounds for refusal).
If no watch service is in place, the owner of the prior trademark may not even become aware of the new filing and therefore the three-month term for opposition may expire unnoticed, thereby depriving them of the possibility of contesting registration of the later trademark identical or similar to their own.
In such cases, until about one year ago, the only available solution in Italy was to take legal action before the competent court, which implied remarkably long times and extremely high costs. For this reason, many companies found themselves forced to tolerate the coexistence of signs similar to their own on the market in order to avoid the delays of the Italian judicial system and related lawyer fees.
However, nowadays it is possible to challenge the validity of a registered trademark also before the Italian Patent and Trademark Office, by means of an administrative procedure involving a shorter handling time and significantly lower costs.
If, indeed, the trademark owner detects the existence of a registered trademark filed after their own, they can file a so-called invalidity action based on the identity or similarity of the sign for the goods and/or services identical or similar to those of their trademark.
Therefore, if the trademark owner becomes aware of a third party’s use of such sign, it is possible to check whether any trademark has been applied for and registered for that sign and – on condition that the third party owns no prior trademarks – to contest registration by bringing an invalidity action.
In this respect, however, the so-called foreclosure by tolerance – or otherwise called acquiescence – a principle laid out in the Italian Intellectual Property Code, should be taken into account, according to which registration of a third party’s trademark cannot be contested if the owner of the prior trademark, being aware of the use of the later trademark identical or similar to their own, has tolerated such use for a period of five consecutive years, unless the later trademark has been filed in bad faith. It is therefore evident that, once the owner of the prior trademark becomes aware of a later trademark, it is advisable to take action as soon as possible.
But what if the trademark is not being used or there is no way to detect its use?
In this case, targeted investigations can be conducted to check whether identical or similar trademarks have been filed since the searched one.
Such investigations consist in similarity searches with a determined timeframe target: from the filing date of the Client’s trademark on. In this way, Clients may become aware of potential trademarks identical or similar to their own and, having ascertained the existence of a likelihood of confusion, file an invalidity action, thereby safeguarding their trademark monopoly in a specific field.
Hence, should your Clients be active on or potentially interested in the Italian market, such time-spanned searches may be the most effective way to ensure their brand’s exclusiveness in Italy, especially if they have carried out substantial economic and advertising investments to secure their position in our country.
Moreover, the fact that the invalidity action that may follow such searches can be filed directly before an administrative body is an important milestone both for the Italian Patent and Trademark Office, which is finally harmonizing its procedures to those already in place before the EUIPO, and for Clients, given the reduced costs and timing.
We at INTERPATENT remain at your disposal to assess the opportunity to conduct said searches and carry out any further actions.