What happens when two trademarks share the same name?

Can I use my surname as a trademark if another company already uses it?

This is often the first question an entrepreneur asks when starting a business connected to their family name: “It’s my surname – can they really prevent me from using it?”

The answer, however, is not automatic. In industrial property law, a surname is not merely a personal detail; it can become a true distinctive sign of a business. When two companies operate in the same sector using the same patronymic, the issue is not who has a “right to the name,” but whether that name may generate confusion in the market.

The Court of Catania makes this clear: what matters is the actual risk that customers, distributors, or sector operators may attribute the products of one company to the other. This is the logic of Article 2564 of the Italian Civil Code, which requires the later-registered business to modify or supplement its name only when the similarity is such as to create confusion.

In the case examined, both companies had used the surname “Poiatti” for many years in the same pasta market. However, the Court excluded any likelihood of confusion, emphasizing a decisive element: peaceful and long-standing coexistence (see: Trademarks and “silent consent”: the risk of tolerating similar trademarks for too long – Canella Camaiora).

This was not a conflict arising immediately after the entry of a new operator, but a situation involving two businesses that had coexisted for decades, even maintaining commercial relations, without the market demonstrating structural confusion. According to the Court, this prolonged coexistence had, over time, consolidated widespread awareness of the distinct identities of the two companies and their respective trademarks.

In other words, the Court affirmed a very concrete principle: the “coexistence between the two trademarks, prolonged for a significant period […] has led consumers […] to develop the ability to distinguish the two marks and associate them with their respective producing companies.”

Therefore, using one’s surname is possible, but it is never a neutral choice. When that name is already present in the same sector, lawfulness will depend on the overall distinctiveness of the sign, the history of coexistence, and above all the actual perception of the public.

I have received a cease-and-desist letter: must I wait to be sued?

In business practice, a cease-and-desist letter is never just a “legal” document: it is a signal that can immediately affect commercial relationships, negotiations, and reputation. The typical question is: must I wait for the other party to sue me, or can I act first to clarify the situation?

The judgment addresses this point directly, qualifying the negative declaratory action as a fully admissible instrument when it serves to remove a “state of objective uncertainty.” The Court expressly refers to the Italian Supreme Court (Cassation no. 29479/2022): a negative declaratory action is allowed when it “aims to achieve a legally relevant and useful result that cannot be obtained without judicial intervention,” by eliminating uncertainty regarding the alleged unlawfulness of the contested conduct.

The key point, however, is another: according to the Court, it is not necessary for the recipient of the cease-and-desist letter to have already been sued or for litigation to be pending. The mere receipt of the letter (or involvement in proceedings) is sufficient, since that challenge may give rise to an objective uncertainty worthy of protection, even if it did not pre-exist the lawsuit.

Translated into business terms: a negative declaratory action allows a company not to be subject to the timing and strategy of its competitor. If a cease-and-desist letter calls into question packaging, claims, or commercial communication, the company may choose to bring the matter before a judge to obtain a ruling clarifying whether those acts are lawful, instead of remaining in a grey area that could block marketing decisions or investments.

When does packaging truly become unfair competition?

For an entrepreneur, the question is practical: how much must I differentiate myself from my competitor? Is it enough to change a color? A font? An advertising claim?

In the case examined, the challenged conduct included the use of colors, the graphic layout of packaging, the numbering of pasta formats, certain advertising slogans (“Since 1926,” “The first of the family”), and online and trade fair communication. The allegation was unfair competition by confusion and, in part, by misappropriation of reputation.

The Court approached the issue with a very practical criterion: the comparison must not be made in the abstract, but from the perspective of the average consumer, with reference to the overall perception of the product. The packaging is not broken down into individual details; rather, the overall impression is assessed.

In comparing the packages, the panel identified significant differences in predominant colors, the arrangement of graphic elements, and the position and visual rendering of the trademark. Even the use of colors common in the food sector—such as blue or red—was not considered, in itself, appropriative, in the absence of a combination capable of generating confusion.

The same reasoning was applied to the advertising claims. Expressions such as “Since 1926” or references to tradition, family, and territory were assessed in light of the company’s historical background and their actual capacity to mislead the public. The Court excluded that such messages were capable of leading consumers to believe that the products originated from the other company or that there was a parasitic attempt to capitalize on another’s reputation.

An important passage also concerns the numbering of pasta formats: the judge held that this is a functional and widely used system in the sector, lacking autonomous distinctive character.

The principle that emerges is clear: unfair competition by imitation does not arise merely because two products resemble each other in some respect, but when the similarity is such as to create concrete confusion regarding their business origin. In the market for fast-moving consumer goods, where colors, references to tradition, and similar graphic layouts are common, what matters is the overall effect, not the individual element.

For businesses, this means that differentiation is essential, but it is not necessary to reinvent the sector. The dividing line is not absolute originality, but the absence of a real risk of confusion.