Limitations of the Right on the Trademark

Does a trademark owner meet any limits to the exercise of its right? The answer is yes, if we take into considerations the rules of the Italian law in this regard.

These limits are (Article 21, 1) of the Italian Industrial Property Code):

1. The owner of a registered trademark cannot prohibit anyone from using their name and address. This means, for example, that if my name and surname is identical with or similar to a registered trademark, I will be able, in an economic activity, to use it but always and only on condition that such use is in accordance with the principles of professional fairness, i.e. suitable to prevent any risk of confusion and association with the earlier mark. This means, more specifically, that I will have the burden of making a differentiation with respect to the registered trademark and that, actually, I will be able to use my name only in a merely descriptive function.
2. The owner of a registered trademark cannot prevent anyone from using indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production of a product or other characteristics of a product or a service. This means, for example, that if someone has registered a weak trademark containing and indication regarding the species of product (for example, the registered trademark contains the word “wheat” referred to the wheat product), I can insert in my brand (which also distinguishes wheat product) the word “wheat”, but being always careful not to imitate in any way the other elements constituting the pre-existing registered trademark. I must always remember that the use has to be in accordance with the principles of professional fairness.
3. The owner of a registered trademark cannot prevent anyone from using the trademark when it is necessary to indicate the intended purpose of a product or service, in particular such as accessories or spare parts. This means, for example, that if I carry out professional activity of spare parts accessories and spare parts of motor vehicles, I will be able to use the manufacturer’s brand of a car but for the sole purpose of indicating to the public the destination of the product, for example to which kind of car model the spare par is referred. The manufacturer’s indication is lawful only if absolutely necessary.

Be careful: you must always remember that the law expressly states that all the listed uses must be in accordance with the principles of professional fairness, a prerequisite that can never lack.

We find a totally analogous rule in the article 14 of the European Union Trademark Regulation, according to which:

“An EU trademark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:

1. The name or address of the third party, where that third party is a natural person;
2. Signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services;
3. The EU trademark for the purpose of identifying or referring to goods or services as those of the proprietor of that trademark, in particular, where the use of that trademark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.

Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters.”

With regard to compliance with use of the mark with honest practices in industrial or commercial matters, it is interesting to take note of the judgment of the Court of Justice (Third Chamber) C-228/03 of 17 March 2015.

The Court states that:

“use of the trademark will not be in accordance with honest practices in industrial and commercial matters, if, for example:

1. It is done in such a manner as to give the impression that there is a commercial connection between the third party and the trademark owner;
2. It affects the value of the trademark by taking unfair advantage of its distinctive character or repute;
it entails the discrediting or denigration of that mark;
3. Or where the third party presents its product as an imitation or replica of the product bearing the trademark of which is not the owner”