Italian defensive trade marks
Is the defensive trade mark compatible with European Union legislation?
14 December 2018
The defensive trade mark (marchio difensivo) is a uniquely Italian legal concept. The debate persists as to whether it is compatible with European Union legislation. Another open question within the Italian legislative framework regards the degree to which the defensive trade mark is compatible with (i) the prohibition against registration in bad faith and the principle that prohibits appropriation of “ghost trade marks” in the absence of a true intent to use the trade mark; and (ii) the more general prohibition against the unlawful retention of a trade mark for anti-competitive aims.
Under Italian law a “principal” trade mark is one which an owner has a direct commercial interest in. A defensive trade mark is a mark similar to the principal trade mark and registered to strengthen the protection of that principal trade mark.
A defensive trade mark, also called a “protective” trade mark, never expires for lack of use as long as (i) the main trade mark is effective; (ii) the defensive trade mark is registered for the same classes of goods or services as the principal trade mark; and (iii) the defensive trade mark and the principal trade mark are registered in the name of the same owner.
A substantial number of Italian Court decisions have held that the defensive trade mark offers a sphere of protection that is independent from or reinforces the protection available to the principal trade mark. For example, OP-LA’, LOLA’, OILA’ have been regarded as defensive trade marks of OLA’ and Farmotal has been regarded as a defensive trade mark of Farmitalia.
Although certain opposing minority opinions exist, the leading position is that a defensive trade mark must be similar to the principal trade mark. However, the requirement for similarity does not mean that there must be a likelihood of confusion between the defensive trade mark and the principal trade mark. If there was, the role of a defensive trade mark would cease to exist. A defensive trade mark is what prevents third parties from “coming near” the main trade mark “even to an extent that would otherwise be lawful” (VANZETTI-DI CATALDO).
The use of a defensive trade mark is different to the use of a principal trade mark in a form with differing elements which do not alter its distinctive character. The latter does not imply the use of an entirely different trade mark, but rather reflects a different form of the same mark by the same owner, known as Equivalent Direct Use.
The European position on defensive trade marks
The concept of Equivalent Direct Use is envisaged in European Union legislation (Article 10(1)(a) of the Trade Mark Directive), while the concept of a defensive trade mark is not.
In European jurisprudence, the leading case is Il Ponte Finanziaria SpA v OHIM (C- 234/06, 13 September 2007). Here the Court of Justice of the European Union held that: “The argument that the holder of a national registration who opposes a Community trade mark application can rely on an earlier trade mark the use of which has not been established on the ground that, under national legislation, that earlier mark constitutes a ‘defensive trade mark’ is incompatible with Article 43(2) and (3) of Regulation No 40/94”.
More recently, the CJEU delivered another decision in Bernard Rintisch v Klaus Eder (C-553/11, 25 October 2012). The reference was made in proceedings between Mr Rintisch and Mr Eder “concerning the genuine use of a trade mark, used in a form differing in elements which do not alter its distinctive character from the form in which that trade mark was registered, the form used being itself registered as a trade mark”.
Without any contradiction to its previous decision, the CJEU held that “the proprietor of a registered trade mark is not precluded from relying, in order to establish use of the trade mark for the purposes of (Article 10(2)(a)), on the fact that it is used in a form which differs from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form is itself registered as a trade mark.”
Reading the two decisions together, it may be argued that Italian law is not fully compatible with EU law. A European registration cannot be invalidated, neither by opposition nor by a nullity claim, by national Italian trade marks for which serious use has not been proven. Conversely, a national registration can be invalidated in a nullity claim by a defensive trade mark, for which use is not required. In opposition proceedings, the Italian Intellectual Property Code expressly requires proving that the trade mark being opposed is used. Given this very complicated situation, the owner of a defensive trade mark may prefer to wait for the Italian registration. Defensive trade marks that do not alter the distinctive character of the principal trade mark are compatible with European Union law (see the Rintisch case). In these circumstances, registration of the defensive trade mark may not be strictly necessary.
Registration in bad faith
Under Italian law, registration of a trade mark in bad faith is prohibited. According to Italian Scholars and case law, there is a lack of clear criteria for what constitutes bad faith. However, opinions suggest that trade marks may be considered to be made in bad faith if they are not used but obstruct the registration of a third party trade mark. Therefore, defensive trade marks cannot be construed as exceptions to the prohibition of registering trade marks in bad faith.
The concept of a defensive trade mark is arguably obsolete and potentially dangerous as it is not fully compatible with EU, although it is not expressly prohibited as such. Defensive trade marks must also be assessed in light of the prohibition against speculative registrations, especially because defensive trade marks must be aligned to the final specifications of a principal mark for which exclusivity is granted.