The trademark registration of a mark used to identify goods and services is always recommended in order to strengthen its protection. However, there are cases of protection of unregistered trademarks, within the limits of the so-called prior use.
In fact, the holder of a de facto ‒i.e. unregistered‒ trademark, who can demonstrate the constant and consistent use of its mark over time and its dissemination on a non-local level, may oppose the subsequent registration of an identical and / or similar mark to identify identical or similar goods or services.
However, this protection is not automatic: the owner of the de facto trademark needs to act to avoid the registration of the identical and / or similar mark. If the mark has already been registered, he needs to take action to challenge its lawfulness due to the pre-existence of his trademark. Indeed, a tolerant attitude lasting over time, for five consecutive years, by the owner of the de facto trademark impedes the request for protection provided for by Italian and European law.
This is an established regulatory and case-law principle that may, however, not be so easy to implement due to the difficult burden of proof imposed on the holder of the unregistered distinctive mark.
Therefore, it is advisable to ask expert professionals for a preliminary assessment of the circumstances, in order to identify the best viable strategy.
(Elisabetta Sgattoni – elisabetta.sgattoni@studiozunarelli.com)
