As of 1 July 2011 it will be possible to file oppositions against registration of trade marks that cover Italy.

You are entitled to oppose the registration of another's trade mark in Italy if you are:

1. an owner of a trade mark that is registered in Italy itself, or a CTM (European trade mark registration) that covers Italy and has an earlier filing date;
2. a person with an Italian application for trademark registration which has a prior filing date, or is effective in Italy from a prior date due to a priority right or to a valid claim of pre-existence; or
3. the licensee of the trade mark and you have the right to exclusive use of it.

The term to file an opposition is:

1. Three months from the publication date of the application in the  Bulletin of Italian trade marks;
2. Three months from the first day of the month following that when an international trade mark application was published in the Gazette de l’Organization Mondiale de la Propriètè Intellectuelle des Marque Internationales.

The opposition procedure also provides for a "cooling-off period", in which the opposition proceedings are suspended to allow the parties to investigate the possibility of reaching an amicable settlement. It may be possible to settle the matter through a restriction of goods or services covered by the application for example, through a restricted use undertaking, or a co-existence agreement, etc. Filing the opposition preserves your rights whilst such negotiations are ongoing.

We are well placed to file oppositions with the Italian Patent and Trademark Office for you, both against Italian trade marks and Italian portions of international trade marks. We take this opportunity to remind you that we can of course, also assist you in the opposition procedures before OHIM (The regional European Registry).

If you would like more information on these opposition proceedings, please contact one of the people in our Brand Enforcement practise area.