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Home THE TRADEMARK Trademark with Reputation

Trademark with Reputation

by Redazione / Monday, 16 April 2018 / Published in THE TRADEMARK

Trademarks with reputation have an ultra-class protection.

Trademark with a reputation and state of reputation

In this post we talk about:

  • Italian and e.u case-law concerning the state of reputation
  • How to acquire reputation

Italian and e.u case-law concerning the state of reputation

Article 20, 1) c) of the Italian Industrial Property Code provides that:

“The proprietor shall be entitled to prevent all third parties not having his consent from using in economic activity a sign identical or similar to the registered mark to goods or services which are not similar, if the registered trademark enjoys a reputation in the State and if the use of the sign without due cause allows to take unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trademark”.

Corresponding provision within the EU is Article 5, 3 a) of the Directive UE 2015/2436 of the European Parliament and of the Council, according to which:

“A trademark shall not be registered or, if registered, shall be liable to be declared invalid where it is identical wit, or similar to, an earlier trademark irrespective of whether the goods or services for which it is applied or registered are identical wit, similar to or not similar to those for which the earlier trademark is registered, where the earlier trademark has a reputation in the Member State in respect of which registration is applied for or in which the trademark is registered or, in the case of an EU trademark, has a reputation in the Union and the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark”.

How to acquire reputation

First of all, a mark must be used in order to acquire reputation. The protection given by the law will be wider the more the mark will be known.

In the protection of the trademark with reputation the law does not assume that there is a likelihood of confusion on the market. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark (Court of Justice, 23 October 2003, case C-408/01).

Basically the law tries to prevent any of the following occurrences:

  1. Use of the sign without due cause takes unfair advantage of the distinctive character or the reputation of the earlier mark. The unauthorized party can take advantage of the strength of the mark with a reputation in many ways: for example, he can take advantage of the advertising made by the holder of the mark with a reputation;
  2. The use of the sign is detrimental to the owner of the mark with a reputation. The injury can be, for example, in a damage of the image of the mark with a reputation when an identical or similar mark is used to distinguish goods of poor quality.

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Eva Troiani

Eva Troiani (Attorney At Law)

Eva Troiani has been working for over 15 years dealing with all aspects of the trademark: from trademark application to trademark registration worldwide, providing assistance in the event of disputes; she proposes an extensive legal advice to companies and professionals. She is the author of all the articles in this website “registrar-marchio.com”, a project created with the aim of providing useful and updated information on the trademark’s world to all readers. You can follow the lawyer Eva Troiani also on her Linkedin profile.


 

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The texts in this database are only for informational and scientific purposes and they are not to be considered official; we therefore decline any responsibility for possible errors or inaccuracies. All mentioned trademarks belong to their legitimate owners; trademarks, product names, trade names and the images of the products are the property of their respective owners. They are used in this database only for informational purposes, without any purpose of violating existing rights of others.
The information you obtained at this site is not, nor is intended to be, legal advice. You should consult Ms. Eva Troiani and/or a trademark attorney and/or an attorney at law handling with intellectual property for individual advice regarding any legal questions that you may have.

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  • Who we are
    • Eva Troiani law firm: trademark registration and legal protection
    • The Project Registrare-Marchio.com
  • Trademark consultancy
    • The Verification of Trademark’s Requirements
    • Trademark Search: identity and similarity
    • Where to register a trademark
    • Filing a Trademark Application
    • Graphic Creation of a Trademark
    • Trademark protection: the surveillance service
  • Trademark legal assistance
    • Trademark defense from objections of the Trademark Office
    • Trademark defense from disputes
    • Trademark Opposition Proceedings
    • Trademark Assignment and Licence Agreement
  • Contact
  • FAQ
  • Certification
    • EUIPO Webinar 2023
    • SEE Webinar 2023
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