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Trademark forfeiture for non-use: the Italian Supreme Court addresses the “Passaparola” case

Published in: Intellectual Property
by Margherita Manca
Home > Trademark forfeiture for non-use: the Italian Supreme Court addresses the “Passaparola” case

In a recent order (ord. 15903/2023), the Italian Supreme Court has once again ruled on forfeiture for non-use of trademarks, providing clarification regarding the definition of “genuine use“.

In this article:

The "Passaparola" case and the interruption of TV broadcasting

This case involves the company Reti Televisive Italiane SpA (RTI) and the British company ITV Studios Global Distribution Ltd (ITV) in opposition regarding the trademark associated with the TV show “Passaparola”. This popular program was broadcast for years by the Italian television network Canale 5, which is part of the Mediaset Group controlled by RTI.

The case in dispute focuses on RTI’s sub-licensing of the format of the television program “Alphabet Game”, called “Passaparola” in Italy, of which ITV was the licensor.

The program’s broadcasting was discontinued in 2005, and subsequently a special seven-episode edition of the program had been aired between 2007 and 2008. With the discontinuation of the show’s production, RTI had ceased using the “Passaparola” trademark. Therefore, in 2009, ITV filed a CTM application for “Passapalabra” for services related to television.

In 2013, RTI resumed use of the trademark through the airing of some reruns on the TV channel Mediaset Extra. The question is to understand whether such use can be considered “genuine use” for the purposes of trademark forfeiture.

What happens if a trademark is not used?

Article 24 of the Italian Industrial Property Code (IPC) regulates the use of a trademark by providing that if it is not actually used for an uninterrupted period of 5 years it shall lapse. The provision speaks of actual use of the trademark.

Doctrine and jurisprudence have traditionally held that any form of use of the trademark in a distinctive function is abstractly capable of avoiding forfeiture for non-use, provided that a competitively relevant economic effect can be derived from it.

The rationale of the rule is to prevent trademark hoarding phenomena from transforming the corresponding protection into a means of distorting competitive play.

RTI and "Passaparola": has it been abandoned or not?

RTI claimed that it had actually used the trademark “Passaparola” through the broadcasting of the program’s reruns on Mediaset Extra between 2013 and 2014, a use undoubtedly sufficient to cure the revocation for non-use.

Furthermore, RTI claimed that ITV’s filing of the CTM should have been prevented by the presence of its previous trademarks associated with the same name as the program.

On the other hand, ITV claimed that the reruns of the show “Passaparola” broadcast by RTI did not constitute genuine use of the trademarks, but rather symbolic or sporadic use. According to ITV, this would not be sufficient to cure the forfeiture of the trademarks for non-use.

ITV also claimed that it had the right to register the trademark at the community level. According to ITV, RTI’s registration of the trademark “Word of mouth” should not have prevented its registration, as RTI’s trademarks had been revoked for non-use.

The Supreme Court's decision

According to the Italian Supreme Court, it is not possible to assess the genuine use of a trademark based on predefined criteria or fixed quantitative thresholds. On the contrary, such an assessment must take into account the totality of facts and circumstances that demonstrate genuine and significant commercial use of the mark.

The Court stressed the importance of the context in which the mark is used. In this regard, it clarified that the mere fact of using the mark in a television program broadcast on a national channel, visible throughout the territory, is not in itself sufficient to establish genuine use of the mark. This circumstance, while relevant, cannot be considered decisive. Again, the Supreme Court stressed the importance of relating the airing of the mark to the context of the specific television market, in order to assess whether the program using the mark has a real and significant impact on that market, thus excluding mere symbolic use of the trademark.

The Court of Appeals’ ruling was, thus, set aside and the case sent back to the Court of Turin. The latter will be called upon to respect and apply the principle of law established by the Supreme Court: the use of the trademark for its rehabilitation must be such as to exclude a merely symbolic use, and it must have a concrete and significant impact in the television market. The case thus becomes an important precedent in determining the actual use of a trademark, placing emphasis on the specific context in which the trademark is used and the importance of its actual impact on the target market.

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Publication date: 29 August 2023
Last update: 13 September 2023
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