Also the Italian Patent and Trademark Office (UIBM) introduces the “Fast Track” Procedure
The aforementioned procedure is not new: the European Union Intellectual Property Office (EUIPO) already introduced an accelerated examination iter for trademark applications back in 2014. According to the data provided by the Office, such procedure enabled to effectively reduce mistakes present in claims and, thus, incremented the number of European Union trademarks registered without facing objections. EUIPO states that all the applications filed using the Fast Track procedure, whenever they meet the requirements (please see the following link for further details https://euipo.europa.eu/ohimportal/it/fast-track-conditions#33), are published in half the time employed by those filed through the standard procedure.
In Italy, due to the noteworthy backlog, the time that normally goes by between the filing of a trademark application and its examination for the purposes of publication, is indeed very long. This excessive duration makes it very hard for the applicant to be certain about his/her own rights, if not after substantial time, often only after he/she has already invested on the applied-for distinctive sign, and, very frequently, has also started using it.
We hereby recall that the registration iter faced by trademarks at the UIBM can be divided in the following phases:
- Checks on the formal compliance of the application;
- Publication on the Trademark Bulletin;
- Period in which third parties may file an opposition to the registration based on alleged prior conflicting rights (within three months from the publication date);
- In the absence of oppositions, the applications proceeds to registration.
Despite UIBM’s efforts to reduce the time of registration, until today, a drastic and permanent turning point has still not ensued. However, such turn could finally take place thanks to this new Fast Track procedure, which, according to UIBM’s forecasts, would even be faster than the one introduced by the EUIPO.
Pursuant to what is argued in the afore-mentioned circular, with this new iter, effective from February 26, 2019, thanks to the claims’ standardization and the mandatory use of the online procedure, the Office will be able to complete its preliminary checks in only seven days. This should enable applicants to obtain the registration of their trademark of interest in just over three months; of course, this is true only if no obstacles arise during the examination phase or after the publication of the application.
To make use of the Fast Track procedure, the following conditions must be verified:
- The trademark application must be filed through the Office’s dedicated online platform (https://servizionline.uibm.gov.it);
- It will not be possible to claim priority of an earlier trademark;
- It will be possible to request protection only for the products and/or services that are listed in the Nice International Classification in force at the time of filing;
- The applied-for trademark must be an “individual” mark;
- The applied-for trademark must be either a “figurative” or a “word” mark;
- Registration fees must be paid at the time of the filing and via the platform PAGOPA.
To conclude, in theory, the UIBM came up with an impressive initiative to pick up the pace and to become more in line with the timing of the most efficient European Trademark Offices. On the other hand, it is momentous that, such an increase in speed will not end up by negatively affecting the quality and completeness of the preliminary checks conducted by the UIBM to verify the validity of distinctive signs. Notably, since the granting of a trademark confers a monopolistic right to its owner, the correct completion of such verifications undoubtedly remains as essential as the rapidity of the whole registration process.