Trademark with Reputation

Trademarks with reputation have an ultra-class protection.

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.