Trademarks and “silent consent”: the risk of tolerating similar trademarks for too long

Registering a trademark is not enough to ensure its protection: tolerating the use of similar signs for too long may result in the loss of the right to object. In this article, we analyze the concept of acquiescence, which makes a trademark unchallengeable if the owner does not take action within five years from the registration of a conflicting sign. We also explore legal strategies to avoid “silent consent”, from administrative oppositions to legal actions, both in Italy Italian Patent and Trademark Office (IPTO) and at the European level (EUIPO). Finally, we highlight the differences between procedures and the most effective actions to protect one’s trademark before it is too late.

How to prevent the registration of similar trademarks?

To be registered, a trademark must be new and distinctive. According to Article 12 of the Italian Industrial Property Code (CPI), a trademark cannot be granted if an identical or similar sign already exists for related products or services.

However, the Italian Patent and Trademark Office (IPTO) does not conduct an of office examination to check for prior trademarks, leaving it up to trademark owners to monitor the market and identify potential conflicting registrations. Protecting a trademark does not only mean registering it but also continuously monitoring its uniqueness to prevent third parties from wrongfully appropriating similar distinctive signs.

Trademark surveillance is therefore an essential activity to promptly identify potentially harmful registration applications. This monitoring can be carried out at the Italian (IPTO), European (EUIPO), and international (WIPO) levels and is not limited to identical matches but also considers phonetic, visual, and conceptual similarities to prevent market confusion.

Timeliness is important for administrative oppositions, which can only be filed within three months of the publication of an application. If a conflicting trademark is identified, the owner must evaluate the most appropriate action:

• Sending a formal cease-and-desist letter, warning the applicant to withdraw the registration request.
• Filing an administrative opposition, to block the registration with UIBM.
• Initiating legal action, if the trademark has already been registered and more than three months have passed since the application was published.

Actively monitoring the market not only allows timely intervention but also helps avoid high costs associated with ordinary litigation. Acting quickly can resolve conflicts before the contested trademark is registered and solidified.

What happens if a similar trademark is tolerated for too long?

If a trademark owner tolerates the use of an identical or similar sign for an extended period without taking any action against it, they may face the phenomenon of post-registration validation, also known as acquiescence. This principle, governed by Article 28 of the Italian Industrial Property Code (CPI), has irreversible consequences: the contested trademark becomes unchallengeable, and the owner of the earlier trademark permanently loses the right to oppose its use.

For acquiescence to apply, three fundamental conditions must be met:

• The later trademark must be registered. Acquiescence does not apply to unregistered trademarks, even if widely used.
• Five years must pass from the registration without opposition. The owner of the earlier trademark must have tolerated the use of the conflicting sign for five consecutive years without initiating formal objections.
• The later trademark must have been used in good faith. If the subsequent trademark owner acted in bad faith, acquiescence cannot be invoked.

If all these conditions are met, the owner of the earlier trademark can no longer request the cancellation of the later trademark or prevent its use. The later trademark then becomes definitively established in the market, depriving the original owner of any legal protection against it.

To avoid this scenario, it is essential to continuously monitor the market and intervene promptly in case of potentially conflicting trademarks. A formal cease-and-desist letter is a crucial tool to interrupt the period of acquiescence, reaffirming the owner’s exclusive rights and preventing similar trademarks from becoming entrenched. Without timely action, the earlier trademark risks losing its commercial value and distinctiveness, leaving the owner without legal recourse.

Who Can Oppose a Trademark Registration?

A trademark opposition is an administrative legal tool that allows the prevention of the registration of potentially conflicting distinctive signs. Introduced by the Italian Industrial Property Code (Legislative Decree No. 30 of February 10, 2005), this procedure protects the rights of prior trademark owners by preventing later trademarks from creating a risk of confusion or association in the market.

According to Article 177 of the Italian CPI, opposition can be filed by:

• The owner of a previously registered trademark with an earlier registration date or one effective in the country from a prior date.
• An applicant who has filed a trademark registration request with an earlier date, or one that is effective in Italy based on the right of priority or pre-existence claims.
• The exclusive licensee of the trademark, if expressly authorized by the owner.
• Individuals, entities, and associations owning rights over well-known names, portraits, or distinctive signs, as per Article 8 of the CPI.
• Entities authorized to protect designations of origin and geographical indications, such as protection consortia or, in their absence, the Ministry of Agriculture as the competent authority.
• Applicants who have filed a request for protection of a designation of origin or geographical indication, even if this protection has not yet been granted at the time of the opposition.

Since opposition can only be filed within three months of the trademark application’s publication, it is crucial to activate constant surveillance to promptly detect potential conflicts. If the opposition is not filed within the allowed timeframe, the contested trademark may be registered, requiring more complex and costly legal actions to protect one’s rights. Prevention is always the best strategy.

The Trademark Opposition Procedure in Italy

Trademark opposition is an administrative tool that allows for contesting the filing of a potentially conflicting distinctive sign. The procedure begins with the publication of the application in the Official Bulletin of Industrial Property (OBIP). From that moment, the owner of the earlier trademark has three months to file an opposition with the Italian Patent and Trademark Office (IPTO).

The opposition document, which must be submitted in writing, must include:

• Identification of the contested trademark and its application details.
• Indication of the prior rights on which the opposition is based.
• The grounds for the challenge, including an analysis of the risk of confusion or association between the signs.

A government fee is required for filing, and the entire process can be completed online through the IPTO portal.

Once the opposition is filed, IPTO notifies the counterparty, initiating a written contradictory phase where the parties can:

• Submit arguments and evidence supporting their claims.
• Attempt an amicable settlement before IPTO issues a final decision.

At the end of the procedure, IPTO’s decision may:

• Accept the opposition (in whole or in part), rejecting the registration of the contested trademark.
• Reject the opposition, allowing the contested trademark to be registered.

If the decision is unfavorable, it can be appealed before the IPTO Appeals Board and, subsequently, the Business Court.

Acting promptly is essential: once the three-month period has passed, the only option to challenge a registered trademark will be to initiate more complex and costly legal actions.

Trademark Opposition at the EU Level

The opposition system at the European Union Intellectual Property Office (EUIPO) allows holders of prior rights to prevent the registration of conflicting trademarks at the European Union level. The goal is to avoid the risk of confusion or association in the European single market due to later trademarks.

The opposition must be filed within three months of the publication of the trademark application in the EUIPO Official Bulletin. The opposition must contain:

• Identification of the contested trademark;
• Indication of the prior rights on which the opposition is based;
• The reasons for the opposition, including evidence of the likelihood of confusion between the distinctive signs.

After the opposition is filed, the EUIPO conducts a preliminary examination of the admissibility of the request. If the formal requirements are met, a preliminary negotiation phase, known as the “cooling-off” period, is initiated. This initial two-month period can be extended up to 24 months upon joint request, allowing the parties to reach an out-of-court settlement before entering the adversarial phase.

If the negotiation is unsuccessful, the procedure continues with the exchange of observations and evidence, during which the parties must support their arguments.

A distinctive feature of the opposition process at the EUIPO is the possibility for the owner of the contested trademark to request proof of the actual use of the earlier trademark on which the opposition is based, provided that it has been registered for more than five years. If the opponent fails to demonstrate genuine and continuous use of their trademark, the opposition may be rejected.

The EUIPO decides based on the elements provided by the parties, evaluating three main aspects:

• Similarity between the distinctive signs;
• Nature of the goods or services involved;
• Risk of confusion for the public.

The final decision may result in:

• Full or partial acceptance of the opposition, leading to the rejection of the contested trademark application;
• Rejection of the opposition, allowing the contested trademark to be registered.

If either party is dissatisfied with the decision, they can appeal to the EUIPO Boards of Appeal and, ultimately, to the Court of the European Union.

Constantly monitoring trademark applications is essential for acting promptly and protecting one’s trademark from potentially harmful registrations.