Can a registered trademark that has never been used continue to exist simply because it is classified as a “defensive trademark”? And to what extent and under what conditions can a trademark serve a so-called “defensive” function?
To answer these questions, it is worth analyzing a very recent ruling by the Milan Court, Specialized Business Division, obtained by our Firm on behalf of a leading multinational in the confectionery sector; in that case, the Milanese Judges, while clarifying that the defensive trademark constitutes an exception to the principle of actual use of a mark, outlined with greater precision the scope and criteria for the applicability of the defensive trademark.
To better understand this concept, it is necessary to start with the general principle set forth in the Intellectual Property Code, according to which failure to use a trademark within five years of its registration results in its inevitable forfeiture.
Now, the defensive trademark – which is based on Article 24, paragraph IV, of the Industrial Property Code – constitutes an express exception to the aforementioned principle, in that it may remain unused without resulting in its forfeiture.
Specifically, the owner of a “main” trademark (one that is actually used for the same goods and services as the “unused” one) is permitted to register marks similar to the main one, with the aim of extending the protection of the main trademark to closely related variants that preserve its distinctive core and prevent competitors from easily circumventing it.
In other words, “defensive” trademarks are filed and registered precisely to “defend” the main trademark, to prevent third parties from appropriating it and thereby creating a potential risk of confusion between the trademark and the main mark used by the company. This is particularly useful when a company owns a so-called “family of trademarks” all characterized by the same distinctive core.
The difficulty in applying this concept lies precisely in assessing whether or not the defensive trademark can be considered similar to the main one, all without creating unjustified monopolies or situations where signs are hoarded on the market. It is no coincidence that the Italian trial courts have always maintained a strict interpretation of this concept and have therefore rarely – and in very few cases – found that the defensive trademark concept applies.
And even in the case decided by the Court of Milan, the approach was no different, nor were the conclusions reached by the Milanese judges; in fact, by fully accepting our Firm’s defense arguments, the Milan Court ruled that the contested trademark could not benefit from the protection reserved for defensive trademarks, consequently declaring it forfeited for non-use and clarifying certain principles useful for better understanding the so-called “defensive” nature of a mark.
Firstly, the Court of Milan took care to point out that the concept of a defensive trademark is not expressly recognized in European law but rather constitutes a national legal construct that has survived in the Italian legal system as an exception and, as such, is subject to an extremely strict interpretation.
Moreover, while EU case law tends to view the registration of a trademark that has never been used as a possible indication of bad faith on the part of the applicant, the Italian legal system still allows for a very limited form of protection for such unused trademarks, provided they are attributable to and similar to the main mark.
An overly broad interpretation of this concept would, in fact, allow “sleeping” trademarks to be kept alive for the sole purpose of preventing new operators from entering the market, resulting in an unjustified monopoly incompatible with the principles of free competition.
Consistent with this approach, the ruling in question clarifies that the requirement of similarity must be assessed with particular rigor, such that the mere presence of a common lexical root – especially in short trademarks – is not sufficient to establish the existence of a defensive trademark, since this would ultimately grant the owner a monopoly over elements lacking independent distinctive character.
It is therefore necessary that the unused “defensive” sign possess characteristics that make it a genuine “minor variation” of the main trademark – that is, a substantially overlapping variation characterized by minimal differences from a visual, phonetic, and conceptual standpoint.
The conclusions of the Court of Milan must be interpreted as an inevitable alignment of national law with the principles of European law, thereby reaffirming the exceptional nature of the defensive trademark doctrine and the consequent need for a strict interpretation of the conditions justifying its application.
From this perspective, on the one hand, the decision in question confirms, in principle, the possibility that a sign, even if not in use, may nonetheless receive protection against third parties as a defensive trademark; on the other hand, the same ruling confirms that attributing defensive status to a trademark requires a rigorous and careful assessment of its prerequisites, in order to safeguard the principles of free competition.
This decision is significant not only from an interpretive standpoint but also from an operational perspective, as it advises trademark portfolio holders to exercise greater care when registering trademarks that they actually intend to use, thereby avoiding the unnecessary cluttering of the trademark register with marks that, as we have seen, ultimately end up being declared invalid for non-use.