Industrial property, Use of the trademark, Civil Cassation, First Section, Order n. 15903 of 06/06/2023
Art. 24 of the Italian Criminal Code. Use of the trademark and the Court of Justice 11 March 2003, Ansul, C‐40/01, par. 43
Passim
The art. 24, paragraph 3, IPC provides that, except in the case of rights acquired on the trademark from third parties with filing or use, revocation cannot be enforced if between the expiry of the five-year period of non-use and the filing of the application or objection to revocation ‘genuine use’ of the trade mark has begun or resumed.
As taught by the Court of Justice regarding the revocation of the trademark for non-use, in verifying the “genuine use” of the trademark (pursuant to Article 10.1 of Directive 89/104/EEC) it is necessary to take into consideration all the facts and the circumstances which may prove the reality of its commercial exploitation, in particular the uses considered justified, in the economic sector concerned, to maintain or gain market share for the goods or services covered by the trade mark, the nature of those goods or services, the characteristics of the market, the breadth and frequency of use of the trademark (Court of Justice 11 March 2003, Ansul, C‐40/01, par. 43).
Symbolic uses must thus be considered excluded, which are intended only to preserve the rights conferred by the trademark (Court of justice C‐40/01 cit., par. cit.; more recently Court of justice 8 June 2017, Gözze, C‐ 689/15, paragraph 37, where the references, in addition to the judgment just indicated, to the Court of Justice of 13 September 2007, Il Ponte Finanziaria/OHIM, C‐234/06 P, paragraph 72, and to the Court of Justice of 19 December 2012, Leno Merken, C‐149/11, para. 29).
Precisely since the “genuine use” of the trademark is aimed at maintaining or gaining market shares, it is then evident that the circumstance by which the exploitation of the sign combined with a television program takes place cannot per se through a broadcaster that broadcasts unencrypted throughout the national territory: if this were the case, each brand associated with a television broadcast of the said broadcaster would be insusceptible to forfeiture and, at the same time, liable to rehabilitation, in the presence of a broadcast, regardless by the individual circumstances concerning the latter, such as frequency and duration.
On the other hand, it is always necessary to correlate the broadcasting to the television market, to verify whether the transmission which carries the trademark has an effective impact on said market, so as to be able to exclude that, in relation to it, it is to be considered symbolic. That the program is broadcast by a broadcaster whose signal reaches every potential user of the television market is therefore not in itself decisive.
Source Supreme Court of Cassation
