The Firm has recently represented a company in Trieste which operates in the coffee sector and which registered its trademark with the EUIPO (European Union Intellectual Property Office) at a European level. The granting was though opposed by Heineken B.V.. The latter, in fact, is in turn the owner of a trademark relating to the coffee sector, registered at a national level in two European countries, reminiscent, from a verbal point of view, of the trademark registered by the company based in Trieste. During the cooling off period (i.e. the period which -in the event of an opposition to the registration of a trademark- is granted to the parties to reach an agreement in order to avoid the successive litigation phase), the company based in Trieste, assisted by Andrea Piras, proved to Heineken the previous use of the trade mark also in the territories for which the Dutch company had obtained the national registration. In addition to having proven the earlier and actual use of the trademark, the company in Trieste was also able to demonstrate the lack of grounds for any confusion between the two trademarks, also in light of their different graphic presentation. Based on these elements the parties were able to reach a settlement agreement, through which they agreed on the co-existence of their respective trademarks and thanks to which Heineken undertook to withdraw the opposition raised at a European level.
(Trieste Office – Andrea Piras – 0039 (0)40 7600281).
