An unregistered trademark (marchio di fatto) is a distinctive sign useful for distinguishing company products and services, making them recognizable and preferable to the public; however, as they are not registered, there is a risk they may be used by others.
What is an unregistered trademark?
An unregistered trademark is defined as a distinctive sign that has not been registered but is used by a company for the marketing of services or products and has achieved visibility and distinctive capacity within the target clientele and relevant territory.
The protection of unregistered trademarks
The legal system also protects those who use a trademark without registration, under Art. 2571 of the Italian Civil Code and Art. 12 of the Codice della Proprietà Industriale (Industrial Property Code, "c.p.i."). Art. 2571 provides that anyone who has made use of an unregistered distinctive sign has the right to continue using it, despite a registration obtained by others, within the limits of its prior use. The protection of the exclusive right to an unregistered distinctive sign is based on its actual use and the effective degree of reputation achieved.
The owner of a logo that has become known throughout the national territory may prevent others from using it for the same products, but not for similar products. They may also seek to have a subsequently registered confusingly similar distinctive sign declared null and void for lack of novelty. However, the relevant action must be exercised within 5 years to avoid the validation of the subsequently registered logo, pursuant to Art. 28 c.p.i.
The owner of an unregistered brand known only in a local territory will receive more modest protection. In fact, they cannot prevent other entrepreneurs from using it for the same products. They cannot prevent a competitor from validly registering it, and in such a case, they may only continue to use their own distinctive sign at a local level. The owner of the registration will have exclusive use in every other area of the country.
On a criminal level, an unregistered brand has more limited protection and lacks international protection. Finally, it is important to emphasize that it is not subject to the protections offered by the c.p.i., but only to those generally provided by the regulations on unfair competition.
Critical issues of unregistered trademarks
The effects of a registered distinctive sign run from the filing date of the application in the case of an Italian national logo, or from the time of publication of the registration in the case of a European Union trademark. Conversely, in the absence of a formal registration procedure, the unregistered trademark receives protection only on the condition and at the moment when, following its use, it acquires a qualified reputation or – within the limits mentioned – has been effectively used at a local level.
Therefore, while a registered sign can be protected even before its actual use, an unregistered sign does not enjoy this benefit because – it bears repeating – the requirement for its protection is the reputation resulting from its use.
Legal action to protect unregistered trademarks
If one intends to protect an unregistered logo through legal action, it is necessary to fulfill a particularly substantial burden of proof. This involves demonstrating non-symbolic or merely preparatory use of the trademark, proving that a qualified reputation has been achieved through prior use, and further demonstrating that the reputation reached covers the territorial scope in which the subsequent identical or similar sign is used. A registered trademark, on the other hand, is assisted by a presumption of validity of the registration.
Can an unregistered trademark invalidate a registered trademark?
An unregistered logo can invalidate a sign subsequently registered or used by a third party only if the first distinctive sign has acquired a general reputation, i.e., at an (at least) national level.
Conversely, if it has acquired a purely local reputation, it cannot invalidate a subsequent registration; instead, it may allow the owner to continue using their distinctive sign only within the scope of the local distribution achieved.
This distinction does not exist for registered trademarks, whose protection against subsequent confusingly similar marks undoubtedly extends to the entire territory in which they are registered.
Unregistered trademarks in foreign countries
In several foreign states, including China (and also France), the unregistered trademark is not recognized. Therefore, the rule applies that the first to register is also the only one who has the right to use the sign in that specific territory.