Proof Of Use Of Community Trademarks In Italian Opposition Proceedings: The Position Of The Italian Pto.

On February 5, 2015, the decision of the Italian PTO (UIBM) ruling on Italian opposition proceeding n. 32/2012 (PepsiCo Inc. v. Perfetti Van Meille Spa) has been published. This decision is very important as it provides, in absence of previous decisions on the matter, indications on the delicate issue concerning the territorial scope of the proof of use of a Community Trademark used as an earlier right in an opposition proceeding against an Italian Trademark Application. In this regard, the decision at issue has faced the particular case in which the proof of use of the Community trademark has no reference to the Italian market, but only to other EU Countries. The complexity of the matter at issue is confirmed by the fact that a reference for a preliminary ruling is pending before the Court of Justice. Anyway, while waiting the judgment of the ECJ on the matter at hand, the actual position of UIBM is as follows: in opposition proceedings against Italian trademark applications, when proof of use is required against an earlier right consisting of a Community Trademark, it is sufficient to prove that the use of said CTM has occurred in a relevant part of the EU territory, which may also consist of a single member State other than Italy.