Are decisions rendered by the UIBM subject to Res Judicata?

Following the introduction of administrative oppositions in front of the UIBM in 2009, the Italian doctrine has discussed on the possible preclusive effect of decisions rendered by the Italian trademark office.

The decision rendered by the Case T-11/13 (MEGO / TEGO) at the end of September, confirms what we knew: the decisions of opposition and nullity trademarks in front of the OHIM (but the same goes for the UIBM) do not have the effect of res judicata. This means that if an opposition has been rejected, the same party can bring another action for invalidity for the same reasons and under the same earlier grounds on which the Office has already taken a decision.

Of course the same applies when an action is introduced in front of a specialized court for nullity, revocation or infringement, when the UIBM has already rendered a judgment for the same trademarks.

A not so kind… Kinder

The Italian Trademark Office recently rejected an opposition filed by Ferrero, owner of the  world know Kinder trademark against an individual who registered the trademark “Kind Milk” in class 29 (milk and it’s derivatives).

Ferrero immediately filed an opposition in front of the UIBM claiming risk of confusion with several registered trademarks owned by the Italian food company, namely “Kinder”, “Kinder Milkosa” and “Kinder Milk Snack Point” as these trademarks are registered in classes 30 and 29 claiming a likeliness of confusion under art. 12 of the Italian Intellectual Property code (CPI).

According to the trademark office the goods covered by the conflicting signs were considered to be identical solely on the basis of what is specified in their applications for registration in the "milk and milk products" and for goods in Class 30 (pastry, confectionery and ice cream) but an alleged similarities between the signs do not exist and there is no risk of confusion among consumers and that the opposition should be rejected totally. 

Consequently, the application for registration of the mark was upheld.