When a trademark has not been registered, it is commonly referred to as a “de facto trademark”.
De facto trademarks have limited protection. The Law actually states that to secure the right to exclusive use of a particular trademark, the most appropriate legal instrument is registration (“Whoever has registered in the forms established by law a new trademark suitable for distinguishing goods or services has the right to make exclusive use of it for the goods or services for which it has been registered,” see Art. 2569 Italian Civil Code, first paragraph).
The main risk facing those who do not register their trademark is that another party, filing first for the same trademark and/or a confusable trademark, will steal your trademark. If this happens, the first (de facto) user of the trademark may be precluded from obtaining a (valid) registered trademark.
This is because the first person to obtain a trademark registration enjoys an absolute presumption of ownership of the right and nationwide protection.
“De facto trademark” protection exists (but is relative)
Our Civil Code provides that “a person who has made use of an unregistered trademark shall be entitled to continue using it, notwithstanding the registration obtained by others, to the extent to which he has previously made use of it” (See Article 2571 Civil Code). Indeed, Art. 12 of the Industrial Property Code prohibits the registration of a sign as a trademark if it is identical or similar to an unregistered but already sufficiently well-known sign (See Art. 12, c. 1 IPC).
The Italian Supreme Court has also clarified that “the protection of an unregistered trademark is grounded in the distinctive function that it performs in practice, as a result of its notoriety among the public” (See Civil Cass. Sec. I Sent., 13/05/2016, no. 9889 rv. 639807).
The territorial scope of use and the trademark’s notoriety are always rather critical (and laborious) elements to prove in court. As anticipated, in the case of de facto trademarks that are not very well known, the Law does not prevent other parties from using the trademark in territorial areas other than those of the pre-user and/or that they achieve a valid national registration.
The prevalence of the registered trademark
By and large, the rule is this. Those who used the mark first, but did not register it, may continue to use it only within the limits of territorial pre-use (and will have to make do with this limited right).
And always provided he can prove the pre-use in court.
The owner of the registered trademark, on the other hand, will be able to legitimately use it throughout the “remaining” national territory.
In short, one should settle for a “de facto trademark” only if one expects to contain one’s business/entrepreneurial activity to a purely local scope
In all other cases (not to say always) it would be advisable to proceed with the registration of one’s trademark.
It is necessary to remember that the owner of a registered trademark can always rely on the legal presumptions conferred by the filing/registration certificate. They relate as much to the validity as to the ownership of the trademark in the hands of its registrant.
To request our assistance on this topic, we invite you to contact us or visit the page of our website dedicated to trademark registration. Also, If you are curious about how much it costs to register a trademark you can use our tool to get an automated online quote.
