The principle of unity between trademarks and other distinctive signs

Article 22, 1 of the Italian Industrial Property Code provides that:

“ It is prohibited making use as a business name, corporate or trade name, sign and domain name of a site used in economic activity or other distinctive sign, identical with or similar to a third party’s trademark if, due to the identity or similarity between the business activities of the holders of such signs and the products and services for which the trademark has been adopted, there exists the likelihood of confusion on the public, which may also consist in the likelihood of association between the two signs”.

The second paragraph extends the ban to products and services which are not similar, when the trademark in question has a reputation in the State.

Article 22 must be coordinated with Article 12, b) of the Industrial Property Code, which prohibits the registration of marks which are identical with or similar

“to a sign already known as a business name, corporate or trade name, outdoor sign and domain name used in economic activity or other distinctive signs adopted by others, if due to the identity or similarity between the signs and the identity or affinity between the business activity and the products or services for which the trademark is registered, there exists a likelihood of confusion…”

Thus, there is a very close connection between the different types of distinctive signs; in particular, it is recognized the principle of the “unity of the distinctive signs”, according to which it is attributed importance to the identity and similarity of the signs of a different kind (eg, trademark and company name or trademark and domain name) when a risk of confusion may arise in the market, as well as episodes of unfair advantage.

It should be kept in mind, however, that the earlier signs different from trademark which are able to prevent the registration of a trademark are those known in a not only local sphere. If you wish to prevent the registration of a mark which is identical with or similar to your distinctive sign (for example, the later trademark is similar to your company name), you must be able to demonstrate its notoriety, not limited to a local sphere.

With regard to the EU law, we draw your attention to the article 8, 4) of the European trademark Regulation No 2017/1001 (relative grounds for refusal), which provides for the possibility of an opposition to the registration made by

“the proprietor of a non-registered trademark or another sign used in the course of trade of more than mere local significance, where and to the extent that, pursuant to the Union legislation or the law of the Member State governing the sign:

1. Rights to that sign were acquired prior to date of application for registration of the EU trademark, or the date of the priority claimed for the application for registration of the EU trademark;
2. That sign confers on its proprietor the right to prohibit the use of a subsequent trademark”.