HOW MUCH A TRADEMARK SHALL BE USED BY A NON-PROFIT ASSOCIATION TO AVOID BEING DECLARED REVOKED FOR NON-USE? THE SEVERE OPINION OF THE COURT OF BOLOGNA

According to article 24 of the Italian Intellectual Property Code, an Italian trade mark shall be revoked (i) if, within a continuous period of five years, it has not been put to genuine use in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use or (ii) if the use is suspended for the same amount of time.

Not many Italian decisions addressed the question of which uses are considered “genuine” and which is the sufficient amount of use that would put the right-owner safe from any contestation.

The Court of Bologna had the chance to investigate this question in a case (available here) involving a non-profit sailing club that sued a company when it discovered that it had started the production and commercialization of sailing cloths and accessories using the exact same trade mark already registered by the club and had registered a number of identical and similar trademarks for identical products (i.e. sailing accessories and garments).

immagine-iplens-moro

According to the defendants, however, the plaintiff could not enforce its earlier trademark because it had been used on the market in a manner that was not effective. Thus, they counter-claimed to declare it revoked for non-use.

The plaintiff resisted claiming that the use made of the “IL MORO” trademark in the years was genuine and continuous, in line with the purposes of the sailing club and the activities organized by its members. In particular, the plaintiff showed, by filing a number of pictures and invoices, that the trademark was used for clothes, shoes and accessories that were distributed for free during sailing races and similar events.

Bearing in mind that the rationale behind the provision on revocation for non-use is to “clean” the register from those trademark registration preventing third parties from registering and using a name or a logo as trademark in absence in the right owner of any interest in being secured such monopoly – which is indeed a goal consistent with the pro-competitive rationale of the requirement of availability (i.e. the need to keep free) – the case law actually adopts different approaches on the notion of use that is sufficient to evidence the subsistence of said interest.

According to a first theory, any type of use is sufficient, as long as it shows an actual interest of the right holder in continuing to distinguish its products/services on the market. Consequently, only the complete and total cessation, in any mode, of the trademark’s use would cause its revocation. Even a local, restrained in time or intermittent use could be thus considered sufficient (see Court of Milan decision of 10 October 1996, Court of Milan decision of 30 September 2002, Court of Turin decision of 21 December 2004 and Court of Rome decision of 22 May 2003 and, among the leading scholars, A. Vanzetti – V. Di Cataldo, Manuale di diritto industriale, Milan, 2012, page 283).

According to a second theory, to which the decision in comment adheres, only a sufficiently intense, stable and continuous use of the trademark on products or services offered for sale on the market can prevent revocation. This use shall be not symbolic: consumers shall be aware of the sign so that it is capable of distinguishing the products or services from the competitors’ (see Supreme Court case no. 16664 decision of 1 October 2012, Court of Naples decision of 2 February and Court of Milan 20 September 2002).

By upholding this second theory the Court of Bologna non only affirmed that the use made by the plaintiff was too limited for the small amount of sailing clothes and accessories produced by the club, but also claimed that said use was not genuine. This because the garments and accessories on which the trademark was fixed were promotional gadgets intended to be distributed for free to club members and in occasion of sailing events. In other words, they were not for sale. Thus, the “IL MORO” figurative trademark was, according to the Court of Bologna, not used to distinguish the sailing club’s products from the ones offered by other companies on the relevant market.

Even if the ‘requirement of availability’ would support the result of the decision, due to the limited use made of the trademark on the market, it is also true that trademark law does not require that only companies with a profitable business (and the consequent capability of demonstrating wide sales made on the Italian market) are entitled to register a trademark.

In particular, the provision requires the existence of a use and not that such use has generated incomes to the right owner. The EU Court of First Instance seems to have confirmed this point, having assessed – with respect to EU trademarks, but the provision is equivalent – that “the purpose of the provision is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks” (Case T-191/07 Anheuser‑Busch v OHIM, Inc. see also case T‑169/06, Charlott v OHIM and case T‑203/02 Sunrider v OHIM).

It thus seems that the evaluation of the existence of a use should be carried on taking into account also the type of business of the right-owner, on the basis of a case-to-case analysis. Otherwise, the trademarks registered by non-profit organizations would be seriously compromised.

Court of Bologna, case No. 9754/2013, 9 September 2015, Europa Yacht Club, Moro S.r.l. and Giovanni Benito Ballestrazzi v. Punta della Maestra S.r.l., Overseas Property LLC, ASD Il Moro di Venezia Yacht Club and Rama S.n.c..

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