How the UIBM Examines Trade Marks: Italy’s “No Ex Officio” Rule for Relative Grounds

One of the most significant features of Italy’s trade mark system — and one that catches many international applicants off guard — is that the Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi, or UIBM) does not examine applications for conflicts with prior marks. Unlike jurisdictions such as the United States, China, Thailand, or Indonesia, where the trade mark office proactively searches the register and refuses applications that are similar to existing registrations, the UIBM examines only absolute grounds. The entire burden of policing conflicts with prior rights falls on the owners of those rights, through the opposition procedure.

What the UIBM Examines

The UIBM’s substantive examination is limited to absolute grounds for refusal under the Italian Industrial Property Code (Codice della Proprietà Industriale, or CPI), Legislative Decree No. 30 of 10 February 2005. Specifically, the UIBM examiner verifies that:

• The mark is not devoid of distinctive character (Article 13 CPI).
• The mark does not consist exclusively of generic names or descriptive indications of the goods or services.
• The mark is not contrary to law, public order, or accepted principles of morality (Article 14 CPI).
• The mark does not contain deceptive elements that could mislead the public as to the nature, quality, or geographic origin of the goods or services.
• The goods and services are properly classified under the Nice Classification system.

If the examiner identifies an absolute ground for refusal, the applicant receives a provisional refusal (office action) and has the opportunity to respond or amend. If no absolute grounds exist, the application proceeds to publication.

What the UIBM Does Not Examine

Critically, the UIBM does not search the register for prior identical or similar marks. It does not compare the applied mark against existing Italian registrations, EU trade marks (EUTMs), or international registrations designating Italy. An application that is identical to an existing registration for the same goods will pass examination and be published, unless the prior rights holder takes action.

This approach aligns with the system used by the EUIPO (the EU trade mark office), which similarly does not refuse applications on relative grounds but instead sends notification letters to owners of earlier marks. The UIBM follows a comparable model: it may notify owners of earlier Italian or international marks designating Italy if a potentially conflicting application is published, but this notification is informational only — it does not constitute a refusal.

The Opposition Procedure: The Three-Month Window

Once the UIBM clears an application on absolute grounds, it is published in the Italian Trade Mark Bulletin (Bollettino dei Marchi). From the date of publication, prior rights holders have three months to file a notice of opposition with the UIBM.

The opposition procedure, introduced in Italy in 2011 following the EU Trade Marks Directive, is modelled on the EUIPO opposition system:

• Filing: The opponent files a notice of opposition within three months of publication, specifying the earlier right relied upon, the grounds, and the goods/services affected. An official fee of €250 is payable.
• Admissibility check: The UIBM examines whether the opposition is admissible (correct form, timely filed, fee paid).
• Cooling-off period: The parties are granted a two-month cooling-off period to attempt settlement. This period can be extended up to 12 months at the joint request of the parties.
• Adversarial stage: If no settlement is reached, the parties exchange written arguments and evidence. The opponent may file additional supporting documents, and the applicant responds.
• Proof of use: If the earlier mark relied upon has been registered for at least five years, the applicant can require the opponent to prove genuine use of the mark during the preceding five years. If the opponent cannot prove use (or show legitimate reasons for non-use), the opposition fails.
• Decision: The UIBM issues a decision, either refusing the contested application (in whole or in part) or rejecting the opposition. The decision should be rendered within 24 months of the opposition filing date.
• Appeal: The losing party may appeal to the UIBM Board of Appeal (Commissione dei Ricorsi) within 60 days of the decision.

The Written Comments Mechanism

In addition to the formal opposition, any person may submit written comments (osservazioni) to the UIBM within two months of publication, identifying reasons why the mark should not be registered. Written comments are not a formal proceeding — the UIBM considers them at its discretion and may notify the applicant if it finds them relevant. However, written comments can draw the examiner’s attention to absolute grounds that might have been overlooked.

Post-Registration Remedies

If a prior rights holder misses the three-month opposition window, the mark will proceed to registration. The prior owner then has two post-registration options:

• Administrative invalidation before the UIBM: Since late 2022 (implementing EU Directive 2015/2436), Italy has introduced administrative invalidity proceedings before the UIBM. Any interested party can file a request to invalidate a registered mark based on both absolute and relative grounds. The official fee is €500, and the proceedings should be completed within 24 months.
• Judicial invalidation: The prior owner can file an invalidity action before the competent Tribunale delle Imprese (Enterprise Court, formerly the IP Specialised Division). This route is more expensive and time-consuming but allows for a broader range of grounds, including bad faith and prior rights acquired through use.

Strategic Recommendations

• Invest in trade mark monitoring: Because the UIBM does not screen for conflicts, prior mark owners must actively monitor the Italian Trade Mark Bulletin for conflicting applications. Without monitoring, confusingly similar marks will be registered unopposed.
• Act within the three-month window: The opposition period is strict and non-extendable. Prompt identification and action are essential.
• Use the cooling-off period strategically: The extensible cooling-off period provides an opportunity to negotiate coexistence agreements without the cost of a full adversarial proceeding.
• Prepare proof of use: If your earlier mark has been registered for more than five years, anticipate a proof-of-use request from the applicant. Compile and maintain evidence of genuine use in Italy.
• Consider the new administrative invalidity route: If the opposition window is missed, the UIBM administrative invalidity proceeding (since late 2022) offers a faster and cheaper alternative to court litigation.

Common Mistakes

• Assuming the UIBM will catch conflicts: This is the most dangerous misconception. The UIBM does not refuse applications on relative grounds. If you do not monitor and oppose, conflicting marks will be registered.
• Relying solely on EUTM protection: An EUTM covers Italy, but the EUIPO’s notification letters are informational only. The EUTM owner must still file an opposition at either the EUIPO or the UIBM to prevent a conflicting Italian national mark.
• Missing the three-month deadline: Once the opposition window closes, post-registration remedies are more costly and complex.

Key Takeaway

Italy’s “no ex officio” approach to relative grounds means that the UIBM publishes trade mark applications without checking for prior conflicts. The entire burden of policing falls on prior rights holders, who must monitor the Italian Trade Mark Bulletin and file oppositions within the strict three-month window. For brand owners in Italy, active monitoring is not optional — it is the only mechanism for preventing conflicting marks from reaching the register.