Decision of the Italian PTO on well-known unregistered signs

The most recent jurisprudence of the Opposition Division and Board of Appeal of the Italian PTO affirms that also “relatively well-known” unregistered signs  can be a valid basis to oppose to the registration of an Italian trademrk application ex art. 8 (3) of the Italian IP Code.

The decision of the Opposition Division of the Italian PTO recently issued in case No. 380/2012 (opposition against the Italian trademark application No. NA2011C001388 MO BAST! and device) has confirmed what already established on March 17, 2014 by the Board of Appeal in respect of the Italian trademark application No. RM2011C004182 IL MONDO DEI DOPPIATORI, case No. 24/14, that is that the renown of an unregistered sign, even when territorially limited and regarding a specific range of public, may constitute a valid basis to oppose to the registration of an Italian trademark application ex art. 8 (3) of the Italian IP Code. 

The italian PTO seems therefore to have adopted a broader interpretation of the notion of “well-known” signs with respect to the past – see the decision issued in case No. 144/2011, where the opposition against the Italian trademark application No. RM2011C004182 IL MONDO DEI DOPPIATORI, based on the identical but only “relatively” well-known prior sign IL MONDO DEI DOPPIATORI was rejected – thus making it easier for the owners of unregistered signs in use in the artistic, literary, scientific, politic and sport fields to profit by administrative oppositions in Italy to defend their rights.

Please refer to:

• http://www.uibm.gov.it/index.php/component/content/article/396-normativa/le-opposizioni/2007486-archivio-opposizioni-anno-2014 
  
• http://www.uibm.gov.it/index.php/component/content/article/321-normativa/2007541-archivio-2014