Reform of Italian IP Code – the implementation of EU Directive 2015/2436

Since March 23, 2019, the Legislative Decree n. 15 of February 20, 2019 implementing the EU Directive 2015/2436 to approximate the laws of the Member States relating to trade marks has been in force and from a judicial perspective, some of the more relevant amendments relate to revocation for non-use, infringement and invalidity actions.

Specifically, the following changes will have an impact on all proceedings initiated in Italy after March 23, 2019 (some doubts exist as far as previous proceedings are concerned).

A. The reversal of the burden of proof on the proprietor of the trade mark in revocation for non-use actions (Art. 121 IPC).

B. The legal standing of licensees in infringement actions (Art. 122-bis IPC).

The following additional change will be fully in force, however probably not before 2023.

C. The possibility to bring invalidity actions before the Italian Patent and Trade Mark Office (Artt. 184-bis – 184-sexies IPC) with new consequences also for invalidity actions traditionally brought before the Civil Courts (Art. 122(4-bis)( 4-ter) IPC).

A. The reversal of the burden of proof in revocation for non-use actions

In Italy, the general principle is that the burden of proof is on the plaintiff. This principle, applied to revocation for non-use proceedings, has always resulted in a probatio diabolica, given the complexity of collecting such evidence.

The recent amendment to Art. 121 IPC provided for a real reversal of this rule. Indeed, “In any case where revocation for non-use is applied for or objected to, the proprietor shall provide proof of use of the mark in accordance with Article 24“.

This amendment “has given the ball” to the proprietors of contested trademarks who, however, won’t actually find any obstacles in proving a genuine use, for instance, through accounting documents, pictures of products, advertising and so on.

B. The legal standing of licensees

In the past, Italian case law has already allowed the possibility for exclusive licensees, to bring infringement actions independently from the proprietor of the trade mark (some more doubts existed with reference to non-exclusive licensees).

Now, the new Article 122-bis IPC asserts that “Without prejudice to the provisions of the licensing contract, the licensee [exclusive and not] may bring proceedings for infringement of a trade mark only if its proprietor consents thereto. However, the holder of an exclusive license may bring such proceedings if the proprietor of the trade mark, after formal notice, does not himself bring infringement proceedings within an appropriate period“.

It is notable that a limit has been introduced specifically to the legal standing of exclusive licensees who will from now on have to: (i) collect the consent of the proprietor; (ii) send a formal notice to the trade mark proprietor before proceeding with any actions. These limits were not provided for by Italian case law in the past.

C. The possibility to bring invalidity actions before the Italian Patent and Trade Mark Office

One of the most revolutionary amendments for the Italian system concerns the possibility to bring invalidity actions also before the Italian Patent and Trade Mark Office, in addition to the Italian Civil Courts as before.

However, even if the relevant Artt. 184-bis – 184-decies are already in force, proprietors of trade marks have to wait until the issuing of a specific implementation decree in order to access this new procedure. The final deadline for the issuing thereof is 2023.

The new system will create a special mixture between actions brought before the Italian Patent and Trade Mark Office and those brought before Italian Civil Courts.

In this regard, Art. 122 (4-bis)( 4-ter) IPC provides for:

  • the inadmissibility of an action for invalidity or revocation of a registered trade mark brought before the Civil Courts, if the Italian Patent and Trade Mark Office has already issued a decision regarding the same trade mark, between the same parties, based on the same grounds and vice versa;
  • the possible stay of an action for invalidity or revocation of a registered trade mark brought before the Civil Courts, if a connected proceeding is pending before the Italian Patent and Trade Mark Office and vice versa.

In other words, it is possible that, after 2023, executive and judicial powers would not be as separate as in the past.

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