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.
A Successful INTA Annual Meeting in London and Valuable Discussions on Opposition Proceedings
We were delighted to attend this year’s INTA Annual Meeting, which once again proved to be an excellent opportunity to reconnect with colleagues and clients from all over the world and to exchange views on the latest developments in trademark practice.
We are particularly proud that our colleague Manuela Bruscolini moderated a roundtable discussion dedicated to trademark opposition proceedings, focusing on oppositions not only as essential enforcement mechanisms for brand protection, but also as valuable opportunities for professional cooperation across jurisdictions, particularly within and into the EU.
The discussion explored and compared the opposition system before the EUIPO with national opposition systems in both EU and non-EU jurisdictions. Participants shared practical experiences and insights relating to procedural aspects, admissibility requirements, timelines, grounds for opposition, evidence of use, language requirements, as well as strategic considerations linked to risk assessment and possible counterattacks, including invalidity and revocation actions.
Particular attention was devoted to the strategic dimension of oppositions, including how they can be integrated into broader trademark portfolio management and used as negotiation tools to reach coexistence agreements or commercially efficient settlements. The discussion also addressed the importance of effective cooperation between lead and local counsel in multi-jurisdictional disputes, highlighting the operational value of responsiveness, procedural reliability and alignment on both legal and commercial objectives.
The session gave rise to a lively and highly engaging discussion, enriched by the valuable contributions and experiences shared by participants from different countries and professional backgrounds. The exchange confirmed how opposition proceedings continue to evolve strategically and how important it is for practitioners to understand not only procedural rules, but also the practical and commercial dynamics behind these actions.
As mentioned during the discussion, opposition proceedings in Italy have been in place since 2011 and today represent a well-established and effective instrument for trademark enforcement. The Italian PTO currently handles approximately 1,500–1,700 opposition cases per year.
One of the key features of the Italian system is the cooling-off period, initially set at two months but extendable in practice up to twelve months. This mechanism encourages amicable settlements and commercially pragmatic solutions between the parties.
Indeed, statistics show that around 65% of Italian opposition proceedings end without a final decision, due to settlements, withdrawals or limitations of the contested applications. Approximately 20% of cases are upheld, either fully or partially, while the remaining cases are rejected or otherwise closed. These figures clearly confirm that oppositions are widely used not only as enforcement tools, but also as cost-effective means to achieve negotiated resolutions.
At EUIPO level, opposition proceedings remain one of the most frequently used trademark enforcement mechanisms in Europe, with several tens of thousands of oppositions filed every year. EUIPO statistics consistently show that a significant percentage of cases are resolved during the cooling-off period, once again demonstrating the effectiveness of oppositions as a strategic tool for settlement and portfolio management.
Handling oppositions in Italy and before the EUIPO is an area in which INTERPATENT has developed significant expertise over the years. Together with trademark invalidity and revocation actions before both the EUIPO and the Italian PTO (the latter possible since December 2022), this field represents an increasingly important area of activity and, we believe, a valuable opportunity to further strengthen cooperation with foreign associates and colleagues worldwide.
We would be pleased to continue the conversation started at INTA and to explore possible synergies in contentious trademark matters both in Italy and at EU level.