The Court of Milan defines the scope of a defensive trademark
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.
Anticipatory interim measures and potential conflict with the Enforcement Directive: the Court of Genoa confirms compatibility with EU law pending the Court of Justice’s ruling
Pending the interpretation that the Court of Justice will provide regarding the possible conflict between the so-called anticipatory interim measures governed by the Italian Intellectual Property Code and Enforcement directive, we would like to point out a very recent measure obtained by our Law Firm, which represents the first (or one of the first) decisions issued by a Court of first instance after the matter was remitted to the Court of Justice.
As is well known, a preliminary ruling is currently pending before the Court of Justice to assess a possible conflict between Article 132, paragraph IV, of the Intellectual Property Code, which establishes, with reference to precautionary measures suitable for anticipating the effects, an exception to the rule of the necessary introduction of proceedings on the merits, and Article 95 of the Enforcement Directive, which, in the event of failure to start subsequent proceedings on the merits, provides instead for the lapse of the effects of the “interim injunction”, comparable to the injunction referred to in Italian law.
Specifically, the Court of Genova, Business Section, with order issued on January 5, 2026, rejected the petition filed pursuant to Article 669-novies of the Italian Code of Civil Procedure aimed at declaring the ineffectiveness of an injunction due to failure to initiate subsequent proceedings on the merits, all on the assumption of a conflict between Article 132, paragraph IV, of the Intellectual Property Code and Article 9, paragraph 5, of the Enforcement Directive.
The Judge of Genova therefore confirmed the full effectiveness of the precautionary injunction, which had not been followed by the proceedings on the merits, considering convincing the reasoning of the previous decision of January 5, 2024, of the Court of Milan, according to which there is no conflict with European law, as the defendant remains in full possession of all defensive guarantees both within the precautionary proceedings themselves, through the appeal pursuant to Article 669terdecies of the Italian Code of Civil Procedure, and subsequently through its independent decision to start a proceedings on the merits (guarantees which, in the case brought before the Court of Genoa, the defendant had decided not to activate).
In essence, the Court clarified that Article 132, paragraph IV, of the Italian Industrial Property Code is compatible with the Enforcement Directive precisely because it provides that each party may initiate proceedings on the merits; in this way, the losing party is guaranteed that it can assert its case in the proceedings on the merits, with the possibility of requesting the revocation of the precautionary measure that is unfavorable to it.
This is a very encouraging measure in view of the decision of the Court of Justice since, in the opinion of the author, the injunction is undoubtedly a particularly effective deflationary tool. We can only wait for the decision of the Court of Justice.
Ambush Marketing: the evolution and uncertainties in preparation for Milan Cortina 2026
For events of a certain media importance, usually sports, companies that are used to investing in advertising compete for commercial partnerships with the organiser of the event, bearing considerable investments but also expecting a positive economic and image return.
It is clear that, by virtue of the most basic principles of competition, even companies that have not reached (or simply did not want to reach) any commercial partnership agreements with the organiser, are allowed to advertise their products by alluding to the event (so-called “smart marketing” or “real time marketing”). Such promotional initiatives encounter a limit and become unlawful if the company replaces itself in the public's perception as the sponsor or official licensee, thus damaging not only the company that has invested to secure the partnership but also the event's organisation, which is consequently forced to lower the fees of licences and sponsorships to make them more attractive.
These practices are called “Ambush Marketing”, a topic more relevant than ever given the upcoming Winter Olympics Milan Cortina 2026. As always, when it comes to major sporting events, the States involved in the organisation regulate the trickiest aspects with specific regulations; the Italian Government, for the occasion, issued Law Decree n. 16/2020 (the so-called “Ambush Marketing Decree”), converted into Law n. 31/2020, which has general application and is not limited to the 2026 Olympic Games.
Regarding this business practice, it should first be pointed out that to date there is no precise legal definition of ambush marketing; the expression has Anglo-Saxon origins and was coined for the first time by Jerry Welsh on the occasion of the 1984 Olympic Games in Los Angeles, when the US multinational Kodak decided to sponsor television programmes related to the Olympics, crediting itself to the public as the official sponsor of the event even though it was not, unlike its competitor Fujifilm.
This expression therefore refers to all those situations in which a company attempts to exploit an event that has particular visibility to its own advantage, without, however, being linked to the organisation of the event.
Sometimes the so-called ambusher presents itself as the sponsor or official licensee of the event using signs, symbols, trademarks related to it. In Italy, it was the Court of Venice in 2005 that first recognised this unlawful conduct, prohibiting the famous Venetian company Benetton from using the term “olympic” on its clothing coincidentally introduced in proximity of the Turin 2006 Winter Olympic Games.
However, there are many ways in which ambush marketing takes place, and only rarely do these go so far as to explicitly recall the (usually well-known) distinctive signs associated with the event. More often, ambush marketing occurs in an indirect and veiled manner and is realised through the intensification by a company of advertising investments in conjunction with, or close to, the event, in order to dilute the official sponsorship of the event obtained by the competitor. For example, during the 1996 Olympic Games in Atlanta, instead of paying the approximately 50 million dollars required by the organisation for sponsorship, Nike set up a massive shop close to the sports facilities and covered the stadiums with its advertisements, thus deceptively suggesting that it was one of the official sponsors of the event. Lastly, in the spring of 2022, the AGCM sanctioned Zalando, which was not a sponsor of the UEFA EURO 2020, for having displayed during the event and close to the Football Village a huge billboard bearing the words "Who will be the winner?" and the flags of the participating countries, thus brazenly referring to the event and creating doubt in the public about the existence of a commercial relationship with the organiser UEFA, which in fact did not exist.
Sponsoring an event concurrent to the main event can also be a form of ambush marketing. Again, Nike in 2008 organised, at the same time as the 2008 Summer Olympics in Beijing, the “Nike + Human Race 2008”, a running race held in 25 countries for charity purposes but which had the deceitful intention of promoting the company by parasitically linking to the Olympic Games.
Another form of ambush marketing is carried out through surprise advertising initiatives during or close to the event. In this case, the ambusher's aim is not to make people believe that it has a partnership with the event organiser, but exclusively to make people talk about it. This is the case of Pringles, which during Wimbledon 2009, despite not being a sponsor, distributed packages outside the tournament venue bearing the words 'These Are Not Tennis Balls', playing on the similarity between the tube of chips and the one containing tennis balls and thus achieving a great return of image.
Finally, there is a conduct that at first sight might appear to be ambush marketing but which in reality is lawful and do not infringe others' rights, that occurs when one creates an indirect association with the event, for example by means of advertising campaigns in which well-known personalities who have previously participated in the event appear. Significant here is the case of Lay's, the chips company that on the occasion of the 2014 World Cup recruited footballers Fabio Cannavaro and Lionel Messi as testimonials, despite the fact that the official sponsor of the Italian national football team at the time was the competitor San Carlo. However, neither the Institute of Advertising Self-Discipline nor the Court of Turin decided to sanction the unlawful conduct in this case. Consistently with this decision, the regulations issued for Milan Cortina 2026 expressly exempt in fact conduct carried out in performance of sponsorship contracts concluded with individual athletes, teams or participants in one of the events.
In the light of the case law analysed, one now has to ask how far a company can go in advertising its products during events of great media resonance. The lack of a clear definition of ambush marketing and the vagueness of the criteria identified by the judges make it difficult to date to precisely identify the perimeter within which a company may lawfully move and make ambush advertising predictable and avoidable. Nor does the Ambush Marketing Decree already cited solve this problem.
In conclusion, in order to adequately protect the investments made by companies in the course of such events and avoid unpleasant surprises, it is hoped that the legislator will soon succeed in providing a regulatory definition of ambush marketing and clearly identify the requirements for its configurability.
In any case, to date there has been no ambush marketing to the 2026 Winter Olympics. We will see!