Italian Supreme Court, January 28, 2022, order no. 2648

Pursuant to Article 2, paragraph 4 of the Italian Intellectual Property Code (“IIPC”), even unregistered trade marks can be protected as “de facto trade marks”.

On the other hand, Article 12, paragraph 1, IIPC provides that the prior use of unregistered trade marks or “de facto trade marks” having merely local/regional reputation grants its owner the right to continue to use it (within the limits – including geographical area – of its former use) even after the same sign has been validly registered by a third party.

As one of the main ways to provide evidence of such prior use is through the examination of witnesses, the Italian Supreme Court has clarified the proper value and conditions of such testimonial evidence.

“Prior use” – a fundamental principle

“Prior use” is a fundamental principle in the Italian trade mark system. It allows entrepreneurs to continue using a certain sign even though it’s not been registered. What’s more, is that they can continue to use it even if that same sign has been registered for the same goods or services but by a different entity.

This forms the exception to the rule that, each sign for certain goods/services must correspond to a single undertaking in the marketplace. The exception allows for “prior use” to be taken into consideration, allowing for the the coexistence, albeit local, of identical or similar signs belonging to different parties. A sort of “duopoly”, as Courts call it. However establishing “prior use” is subject to certain requirements.

Requirements for establishing “Prior use”

As far as the present case is concerned, it is the prior user that bears the strict burden of proving that:

1. it began to use the sign prior to the registration of the trade mark; and
2. the manner of that use established – in the minds of the relevant consumers – the correlation between its commercial activity and the de facto trade mark.

To provide such evidence, prior users can deliver to the Courts amongst others advertising materials showing the past sales of products depicting the sign at issue.

In addition, prior users may request that one or more individuals be heard as witnesses, who will then state that certain products were already covered by a particular sign in the past, therefore proving the extent of the prior use of an unregistered trade mark or de facto trade mark.

Conclusion

In Italy, witness evidence has – as a rule and in practice – a rather significant value. Nonetheless, in this case the Italian Supreme Court provided some important guidance on how to evaluate such proof when prior use is concerned. It was clarified that the Court:

• is not bound by any of the witnesses testimonies;
• must evaluate in a comprehensive manner all the evidence provided by the parties in addition to the written and oral testimony of witnesses;
• is not required to specify the reasons why one witness testimony is deemed more effective than another.

The Supreme Court rejected the plaintiff’s claims that some testimonies had been unlawfully disregarded in favour of others and without adequate reasoning. The Court highlighted the existence of a broad power that judges have to evaluate “prior use” evidence. They found that this should be held in high regard when seeking to ground similar judicial claims on testimonial evidence.