I significativi miglioramenti dell’ UFFICIO ITALIANO BREVETTI E MARCHI negli ultimi 10 anni
30 aprile 2018
Le utilissime informazioni desumibili anche dalla casistica dei
ricorsi legali, per decidere cosa possa essere registrato senza rischi
in Italia.
Navigating the idiosyncrasies of the Italian filing system
The Italian Patent and Trademark Office has made significant steps
towards improvement over the past 10 years. However, foreign rights
holders should be aware of the system’s various quirks.
International rights holders that are lucky enough to deal with Italian
trademarks should be aware of some novelties relating to the Italian Patent
and Trademark Office (UIBM).
Modernisation: numbers and databases
The UIBM has never featured at the top of the efficiency charts of the
world’s patent and trademark offices. However, it has made significant
progress over the last 10 years – so much so that some of its best-known
problems (slowness, excessive bureaucracy and the cumbersome nature of
proceedings) have become a distant memory in some sectors.
Despite this improvement, foreign rights holders should remain aware of one
Italian peculiarity. On renewal of a trademark registration, the UIBM
assigns a new filing and registration number to the renewal mark. As a
result, proof of the validity of an Italian trademark must be submitted by
providing the last registration number and a trace back to the first filing
number.
In this regard,
the UIBM’s official database
is a useful tool through which rights holders can obtain extracts in order
to reconstruct a mark’s history.
Two databases are currently available for trademarks: the traditional
database, which has been active for the past decade, and a modern database,
which is still being implemented. Unfortunately, the transition from the
old to the new database has not been without problems and inaccuracies have
been found in both. Such issues can be remedied only by checking the Trademark Bulletin (for new applications) or by consulting the
UIBM directly (for old registrations).
To complicate the situation, all Italian trademarks – in conjunction with
the adoption of the UIBM’s new e-filing system – are now subject to a
different numbering system. Each new trademark has a 15-digit number, of
which the first six digits comprise the number 30 followed by the year of
filing (eg, the number for trademarks filed in 2017 begins with 302017),
while the remaining digits merely start from one. Helpfully, the UIBM has
provided a conversion table that allows rights holders to amend and add
prior registration numbers in the present system.
One positive note to this numerical revolution is the fact that the
15-digit numbers assigned to applications will no longer change upon
registration.
The accurate management of Italian registrations in an IP portfolio should
enable rights holders to replace old registration numbers (which exceeded 1
million) with the new 15-digit numbers, bearing in mind that the number
will change again on renewal.
Other improvements recorded in the last two years include increased
possibilities for online activities (accessed through the UIBM e-filing
platform) and the significant reduction in the time taken to register
recordal applications. To date, the only procedure that cannot be performed
online is the filing of an international trademark application. Further,
obtaining confirmation of a registered change of ownership or name
recordals now takes only a few weeks (compared to the few months that
rights holders were accustomed to waiting).
The dematerialisation of registration certificates, which have been
replaced by electronically signed PDF documents, will also reduce the
granting time for renewals (to a few months) and the registration time for
non-opposed marks (applications are generally published within six to seven
months and, without opposition, are registered within 12 to 15 months from
filing).
The (late) discussion on retail services: a happy ending
With regard to the examination procedure, the UIBM has taken another step
forward by implementing protection for sales services in Class 35. In 2017
a dispute arose between rights holders and the UIBM, which resulted in the
Board of Appeal issuing an opinion. The protection of sales services had
been resolved at EU level 10 years previously, with the European Court of
Justice decisions in Giacomelli and Practiker. However,
in early 2017 the UIBM suddenly began to issue refusals relating to the
protection of these services in Class 35.
The doubts related not only to the formulation of the specification – that
is, whether it should include the indication of sale and list the goods
being sold – but also to the real protectability of sales services in the
class.
In December 2017 the UIBM affirmed that it “will proceed to the
registration of the trademark applications that intend to protect the sales
services, to be understood as services related to the wholesale or retail
sale (which are exhaustive with the sale), with the clear specification of
the types of products related to said services... in the light of the above
considerations, the findings issued in the past months, pending a response,
whose terms for the reply have already expired (irrespective of whether or
not there is an answer) will be resolved and remedied by the [UIBM] in line
with the indications given in this communication”.
The announcement pins down an issue that was already resolved in much of
the European Union and is extremely favourable for rights holders. Further,
the way in which the UIBM resolved the issue (through a mere communication)
emphasises that the aim to minimise bureaucracy is among the office’s
guidelines.
Opposition proceedings: the Board of Appeal’s key role
There is still a considerable delay in the execution of opposition
proceedings. Despite the law setting a maximum duration of 24 months on
proceedings, even relatively simple decisions (eg, oppositions against
Italian designations in international trademarks that are not defended and
are therefore upheld) are slow to be issued.
However, the timeframe for proceedings before the Board of Appeal – which
issues second-degree decisions regarding oppositions – has improved, and
these are generally discussed and resolved within one year. Active in the
field since 2013, the board has created a set of principles to guide UIBM
examiners (in particular, opposition examiners), as well as trademark
representatives and owners.
The decisions issued in 2015 and 2016 (those issued in 2017 are not yet
published) demonstrate trends that are well established and clearly
followed by the board and which should be received by UIBM examiners.
In Appeals 7432 (Decision 06/16) and 7458 (Decision 46/16) the board
recalled a (suitably Italian) difference between complex and joint marks. A
‘complex’ mark was defined as a composition of several elements, each
having its own distinctiveness, the examination of which must be carried
out separately for each element. In contrast, a ‘joint’ mark comprises
various elements which individually lack distinctiveness, but which in
combination – or rather as a whole – create a distinctive value that is
more or less accentuated.
The distinction between these types of trademark is used by the Board of
Appeal, particularly when evaluating evidence of use or similarity among
single elements in a complex or joint sign. For instance, in Appeal 7432
the use of the word ‘busitalia’ was not enough to overcome a proof
of use request in relation to a figurative complex mark which included the
wording “E IO CI VADO COL BUS, BUSITALIA, Prima Classe come te!”.
In Appeal 7458 the concepts of complex and joint marks were used to affirm
that in a complex mark, the distinctiveness of the figurative elements may
be superior to that of the verbal elements. Indeed, the board affirmed that
there is no abstract hierarchy between verbal and figurative trademarks.
Therefore, the image of a person and other graphic elements was considered
more relevant than the name ‘Capri’, which was included in the mark and
protected by the opponent’s registration.
Similarly, in Appeal 7385 (Decision 13/15) the board affirmed that in the
prior trademark the word elements prevailed over the figurative elements
and the figurative elements had no relation to the relevant goods. However,
in the complex mark the figurative element was the most distinctive
element. Therefore, the public would recognise the disputed trademark by
its iconographic representation. The FAIRFLY mark with triangle device was
thus considered to be dissimilar to the FIREFLY mark with butterfly device.
Unlike the EU Intellectual Property Office, the UIBM and Board of Appeal
(and Italian case law in general) have a well-established history of
distinguishing between weak and strong trademarks, and issue many decisions
that reaffirm this principle. In Appeal 7460 (Decision 48/16) the Board of
Appeal stated that the assessment of confusion must be conducted without
omitting an examination of the strong or weak nature of the trademark. Weak
marks enjoy less protection on the grounds that the consumer’s rational
analysis of the sign occurs at a later stage. However, in this case, the
BIODHARMA mark was refused registration – despite the weak nature of the
prior BIODERMA mark – due to the distinctiveness that it had acquired
through use.
Further, in Appeal 7391 (Decision 14/15) the Board of Appeal stated that
although it must be taken into account that the average consumer in the
relevant sector is educated and circumspect, when it comes to widely
consumed, impulse-purchase products, a lower level of attention should be
taken for granted at the time of purchase. As such, the risk of confusion
remains high.
Conclusion
Thanks to the intense work of the Board of Appeal, clear guidelines are
beginning to emerge for trademark owners on what can be registered and what
is risky to register in Italy. Until a few years ago, the principles now
affirmed by the board were taken from civil case law, which was tasked with
removing trademarks from the register (it is worth noting that until 2011
there was no opposition procedure in Italy) but was usually more inclined
to consider aspects of infringement or counterfeiting than the elements
significant to filing and prosecution.
Rights holders should follow the Board of Appeal’s indications even with
reference to generally private actions (eg, coexistence agreements).
Indeed, in Appeal 7388 (Decision 10/15) the board held that coexistence
agreements are valid only if, and insofar as, they prevent the risk of
confusion among the public. Where the content of the agreement allows for
the confusing or deceptive use of a trademark, the agreement is considered
null and void on the grounds of unlawfulness (for reasons contrary to
public economic policy).
Per gentile concessione:
Simone Verducci Galletti
Bugnion Spa
Questo articolo è stato pubblicato per la prima volta in: World Trademark Review n. 72.
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