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Italiano De facto trademarks (or unregistered trademark) are trademarks which are used but have never been filed or registered, and are governed by article 2571 of the Italian Civil Code.
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Article 2571 of the Italian civil Code provides that:
“Who has used an unregistered mark is entitled to continue such use, notwithstanding the registration obtained by others, to the extent that before has done”.
The Italian Industrial Property Code helps us to understand the limits of such use, in particular with the distinction between unregistered trademark only locally used and unregistered trademarks with general renown.
Limits of the use in de facto trademarks with general renown
The unregistered trademark with general renown can deprive the requirement of novelty any identical or similar trademark which has been later filed/registered for identical of similar products or services. If the holder of a de facto trademark with general renown wishes to take legal action to seek the invalidity of a trademark which has been registered later, it must be able to demonstrate the general renown of its own trademark.
Limits of the use in de facto trademarks with local reputation
On the contrary, de facto trademarks which are only locally used or with a purely local reputation cannot deprive of novelty a later trademark which is identical or similar, but have as their effect of giving the holder thereof the right to continue using mark within the limit in which it was previously used. Also in the case of local pre-use, however, there must be an actual use (nor sporadic neither occasional) by its owner. All the activities that lead to an extension of the use of the brand, including but not limited to all brand advertising with national circulation will be precluded to the trademark owner with a purely local reputation.
Italy: non purely local reputation in case of previous use of a sign
When can the previous use of a sign be considered not purely local and therefore capable of depriving the novelty of a trademark which has been filed or registered later? Can prior use be considered as such if carried out within two provinces?
Firs the Court of Rome and the Court of Appeal of Rome and then the Court of Cassation (Ord. , Section I, 20.12.2024 n.33614) have provided an answer to this question.
In the degrees of judgement preceding the order of the Court of Cassation, both the Court of Rome and the Court of Appeal of Rome had stated that the previous use of a sign can invalidate a subsequent registered trademark on condition that the previous use is homogeneous and constant over time and characterized by not purely local reputation.
In the judgement case brought to their attention, however, both the Court of Rome and the Court of Appeal of Rome had not found any evidence that the pre-used trademark had acquired more than pure local reputation before the registration of the contested trademark, given that from the documents filed to the Courts emerged that the promotion and advertising of the pre-used sign had been carried our exclusively between the cities of Catania and Trapani.
The Court of Cassation, faced with the question of when the requirement of a trademark reputation is met in a non-purely local context, specified that:
“The non-purely local area has been defined as a diffusion of the brand which is regionally at least and this concept cannot logically coincide with a multi-provincial zone, because it requires a diffusion, more or less limited in quantity, but throughout the whole region at least (in some judgments reference is made to the need for diffusion of the previous use of a sign on a national scale, not limited to a local area: see, Cass., n. 22845/2015), since only in this case it can be considered ultra-local” (in the grounds of the judgment, even if for different things, Cass. N. 2976/2020)
In this regard, you can see the Italian Corte di Cassazione (judgement n. 12326 of June 15, 2015):
“In the field of trademarks, the prior local use of an unregistered trademark gives to its user the possibility to continue using such trademark in the same geographical area, even after the registration of an identical or similar trademark by third parties, but does not allow the user to prohibit to the registrant the use of the registered trademark in the above mentioned geographical area: even if there is not a rule that specifically disciplines the conflict between the two parties, it is for this solution …also the “favor legis” for the registrant, which emerges from the most intense and extensive protection granted to the registered trademark, both by the provisions of the D.Lgs.4 December 1992, n.480 (in execution of Community rules), which lead to configure, in this matter, a sort of “duopoly”, able to allow in a local area the coexistence between the used unregistered trademark and the mark subsequently registered”.
The Italian Corte di Cassazione also had the opportunity to state when it could be argued that a trade name is also used as a trademark.
In this regard, the Court states that
“even if we consider valid the principle of unity of distinctive signs, in respect of the use of the distinctive signs it must be reaffirmed the rule of their distinct articulation, so it is quite possible ( in abstract) that an entrepreneur has used a sign as company name without making use of the same sign as a trademark, to distinguish products or services provided, so there is the need, in the event of statement of ownership of an unregistered trademark (only used mark), that who asks to affirm the achievement of the above mentioned right provides, in this regard, a complete proof of both the prior use of the company name and the prior use of the sign as trademark (and the subsequent notoriety of it)”.
In light of the above, therefore, it must be considered that the proof of the local prior use of the company name does not automatically demonstrate the use of the unregistered trademark (de facto trademark).
Requirements of legitimacy of de fact trademarks
With regard to the requirements of legitimacy of the unregistered mark, it is widely acknowledged that they are identical with those required for the registration of any mark, i.e. novelty, lawfulness and distinctive capacity.
If you are the owner of a de facto trademark and you have received a complaint, contact Eva Troiani law firm: you can have an advise.
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