Revocation of the mark for non-use: use of the mark in the context of preparatory activities with external partners does not mean external use

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The Court of Milan issued an interesting judgment regarding the revocation of a trademark for non-use, providing guidance on the meaning of genuine use and the valid reasons for non-use under the Italian Intellectual Property Code ( “IPCI”).

context

A natural person registered the sign ‘AQUA NUNTIA’ in 2011 as an Italian trade mark and in 2012 as a European Union trade mark for class 3 goods and, in particular, perfumes.

Two Italian companies have marketed a line of perfumes inspired by the Italian poet Gabriele D’Annunzio. One of the perfumes was sold under the name: “AQVA NVNTIA”.

In 2018, the trademark holder filed EU and Italian trademark infringement actions against these two Italian companies (the “Defendants“), while the defendants sought – among other things – the revocation of the earlier registration of the mark on the grounds that the marks had not been the subject of serious use by the owner for a period of 5 years , pursuant to EUTM Art 18 and IIPC Art 24, respectively.The trademark proprietor rebutted the counterclaims, also claiming that his ill health was a valid reason for the alleged non-use.

While the Italian proceedings were pending, the invalidity action was brought before the European Union Intellectual Property Office, which ordered the cancellation of the EUTM for non-use.

After the EUIPO decision, the Italian court ruled on the use of the Italian national mark.

Use of the brand with external suppliers and partners

The trademark holder, in order to demonstrate its use of the trademark, claimed to have shared its business plan with external suppliers and partners. In particular, the owner produced evidence to demonstrate that she carried out the following activities:

  • search for perfume partners and companies for packaging activities;
  • production and printing of drafts of advertising material;
  • ask for quotes for the materials needed to make the bulb and bottle the perfumes;
  • printing brochures; and
  • domain name registration and renewal.

According to the Court, the use of a mark is only relevant when it is on the market and when consumers know the origin of the product and when competitors become aware that there is a new player to consider. Therefore, the fact that only external suppliers and partners were involved in the preparatory activities and, therefore, knew the mark, was not sufficient to prove genuine use of the mark since consumers and competitors did not were unaware of the brand.

Therefore, the Court held that the trademark holder only documented the preparation and planning of the product launch on the market, which amounted to mere internal use, which was not relevant to prevent revocation. .

Valid reason for non-use

The proprietor of the mark tried to justify the non-use of the mark by referring to her poor state of health. However, the Court said that his poor state of health could not prevent dismissal for non-use.

According to the Court, the mark was linked to a commercial activity which could be carried out through third parties, for example by granting licenses.

Only an impediment having a sufficiently direct link with the mark, independent of the owner’s will and likely to make it impossible to use the mark, can be qualified as a just reason for non-use, capable of preventing the revocation of the mark.

Comment

This decision reminds business owners that only use of the mark in the market where consumers and competitors have knowledge of the mark can prevent revocation for non-use, while business preparation activities – also carried out with external partners – are not sufficient. Furthermore, valid reasons for non-use can only be invoked in limited circumstances and not when personal reasons have simply made it more difficult to use the mark.

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