Intellectual Property, International registered trademarks, Pre-use of the de facto trademark, Supreme Court of Cassation, First Civil Section, Judgment n. 29574 of 24 December 2020
Passim
Art. 14 of the proprietary code ind.
International registered trademarks containing the geographical name; pre-use of the de facto trademark then registered; protection of the sign as a geographical indication by virtue of effective registrations in Italy; signs capable of deceiving the public, in particular on the geographical origin, on the nature or on the quality of the products or services; requests for verification of acts of unfair competition and non-fulfillment of contractual commitments undertaken; nullity due to lack of novelty of the three brands; plurality of questions; summons in reinstatement in the referral.
The judgment cited opposes mere disputes such as defensive counter-arguments to exceptions in the strict sense, without considering the exceptions in the broad sense, which also expand the thema decidendum in order to paralyze the acceptance of the plaintiff’s request, and in any case concerns ex professo case in which the defendant had not raised an exception in the broad sense but a mere defense.
In the case, the new question and the circumstance on which it was based had been introduced by the defendant with the defense, with which … it had not limited itself to contesting the plaintiff’s claim in the context of the same constitutive facts, but had introduced in judgment a new fact that reasonably rooted the need for a defensive reaction on the part of the plaintiff.
The point of law that opposes the parties in the discussion relates to the fact whether a mere defense or an exception in a broad sense, may or may not legitimize the proposition of the counter-counterclaim.
On the other hand, the opinion expressed in the conclusions of the Attorney General cannot be shared, which would seem to make the admissibility of the reconventio reconventionis subject to the formulation by the defendant of a real “counterclaim”, taking into account the literal content of Article 183 , paragraph 5, first sentence, of the civil code
The question of the suitability of mere defenses to entrench the right to lodge a counter-counterclaim is however not relevant in the present case because … he had not proposed a mere defense in the context of the constitutive facts annexed by the counterparty but, using his assertively, he had expanded the thema decidendum, introducing a new fact, namely the successful registration of the trademark ….., in order to block the counterpart’s application.
According to the jurisprudence of the United Sections of this Court, in relation to the defendant’s defensive option consisting in opposing the claimant with facts to which the law attributes autonomous modifying, preventing or extinguishing the effects of the relationship on which the aforementioned claim is based, it is necessary distinguish the power of allegation from that of detection.
Source Supreme Court of Cassation