Validation of a trademark

The principle of the validation of a trademark provides that it is not possible to act against the holder of a later trademark if its presence has been tolerated for a period of five consecutive years. Let’s analyze the issue more in detail.

The validation of a trademark in Italian law and Italian case-law

Article 28 of the Italian Industrial Property code states that:

“The holder of an earlier trademark pursuant to Article 12 and the holder of a pre-use right on a trademark having a reputation not purely local, who acquiesced, for a period of five consecutive years, in the use of a later registered trademark identical or similar to it being aware of such use, may not claim the declaration that the later trademark is invalid or to oppose to the use of the same for products or services for which the trademark has been used on the basis of its earlier trademark or of its prior use, unless the later trademark was applied for in bad faith. The proprietor of the later trademark cannot oppose the use of the earlier trademark or to the continuation of pre-use”.

The rule in question precludes the request of the declaration of invalidity to the holder of an earlier trademark who acquiesced, being aware of the existence of a later registered trademark identical or similar, the use for five consecutive years. Counterfeiting action is precluded also to the holder of other distinctive signs

“already known as a business name, corporate or trade name, outdoor sign and business domain name used in economic activity or other distinctive sign”.

The law wishes to prevent the prolongation of uncertainty in the law, as well as wishes to prevent that the holder of the earlier trademark, being aware of the existence of a later trademark, awaits maliciously the later trademark reaches a reputation on the market before acting against the competitor. In such way the holder of the earlier trademark could take advantage form the notoriety of the later trademark. The requirement is that the holder of the earlier trademark is aware of the existence of the later trademark, and this knowledge must be demonstrated by the proprietor of the later mark.

With regard to the tolerance on the use of the later mark, Italian “Corte di Cassazione” (Supreme Court) (judgement n. 17927 of 1.7.2008) adopted a restrictive interpretation in this matter and stated that the impossibility to apply for a declaration that the later mark is invalid may be prevented only through judicial actions to the Court, while sending a warning letter might not be sufficient for that purpose.

The validation of a trademark in EU law

The limitation in consequence of acquiescence exists also for the EU trademark. In this regard see article 61, paragraph 1) of the European Union Trademark Regulation No. 2017/1001, according to which:

“Where the proprietor of an EU trademark has acquiesced, for a period of five successive years, in the use of a later EU trademark in the Union while being aware of such use, he shall no longer be entitled on the basis of the earlier trademark to apply for a declaration that the later trademark is invalid in respect of the goods or services for which the trademark has been used, unless registration of the later EU trademark was applied for in bad faith”

The same article, in the paragraph 2, states that:

“Where the proprietor of an earlier national trademark…or another earlier sign….has acquiesced, for a period of five successive years, in the use of a later EU trademark in the Member State in which the earlier trademark or other earlier sign is protected while being aware of such use, he shall no longer be entitled….to apply for a declaration that the later trademark is invalid…”