Acquiescence of an Italian unregistered trade mark. Is it possible?

31st October 2022

Italian wine: a worldwide excellence but also source of several trade mark infringement disputes.

This time, in Bricco Maiolica vs. Cascina Castella (June 15, 2022), the Court of Turin has ruled on a dispute between two wine companies relating to the acquiescence of an unregistered trade mark.

Acquiescence in Italian law

Acquiescence is regulated by Art. 28 of the Italian Intellectual Property Code (“IIPC”).

Art. 28 IIPC provides thatthe owner of an earlier trade mark, who during five consecutive years has been aware of and tolerated the use of an identical or similar later registered trade mark, may not request a declaration of nullity of the later trade mark or oppose the use of the same for the goods or services in relation to which that trade mark was used based on his own earlier trade mark, unless registration of the later trade mark was applied for in bad faith.

In particular, the defendant claimed that both trade marks had coexisted for decades: such tolerance would lead to acquiescence or, at least, the absence of a likelihood of confusion in the marketplace.

The Court of Turin’s decision on the acquiescence and prior use

The Court examined Italian case-law on the acquiescence of an unregistered trade mark; of which there are two main positions:

1. There is Italian case-law supporting the fact that it is possible for acquiescence of an unregistered trade mark. That case-law says that, even if Art. 28 IIPC expressly refers to a “registered trade mark”, it is just an expression of a more general principle: the deliberate tolerance of a later trade mark by the owner of an earlier trade mark. Therefore, this principle might also apply to unregistered trade marks.

• Other Italian case-law denies this possibility. In fact, some regional Courts have applied the decisions of the Court of Justice of the European Union (“CJEU”), which held that the registration of a later trade mark “in the Member State concerned constitutes a necessary condition”.

In the present case, the Court followed the narrow position adopted by the CJEU and rejected Cascina Castella’s claim of acquiescence of the unregistered trade mark. The Court interpreted the law in line with the actual wording of Art. 28 IIPC. In other words, acquiescence was only provided for in relation to registered trade marks only.

However, the Court – also quoting the above-mentioned CJEU decision – added that in any case the tolerance by the owner of the registered trade mark of a third-party unregistered trade mark for a long time, could imply at least the absence of any likelihood of confusion between the two signs.

Therefore, the Court assessed the defendant’s alternative claim of prior use, which (if proved) could prevent a likelihood of confusion with Bricco Maiolica’s trade mark.

By means of witnesses and sales documents, the Court ascertained that the unregistered trade mark “La Castella” had been used for years before the registered trade mark “Castella” – also reaching a relevant position on the marketplace – and that Bricco Maiolica had tolerated the opposing unregistered trade mark for a long time. 

Thus, the Court considered the unregistered trade mark’s prior use to be well-founded.

So, did Cascina Castella lose? No, they actually won on the claim for infringement.

The Court ruled that the relevant trade marks “Castella” and “La Castella” were almost identical but there was no likelihood of confusion on the market, as:

1. Cascina Castella proved the prior use of its unregistered trade mark; and
2. Bricco Maiolica knowingly tolerated the unregistered trade mark “La Castella” for many years.

Comment

The Court– rejecting the acquiescence of an unregistered trade mark – confirmed an orientation already expressed by Italian courts. However, the debate still appears to be live and in future we cannot exclude that other courts in Italy will follow the first orientation instead, granting acquiescence to an unregistered trade mark.