Trademark protection is primarily achieved through registration, by which the owner acquires the exclusive right to use the sign and the right to prohibit third parties from using it without their explicit consent. It is the owner's responsibility to detect any infringements and decide which measures to adopt to enforce their rights.
Trademark protection: the watch service
It is up to the trademark owner to implement a "watch" service on trademarks filed/registered over time, for the purpose of intervening immediately to protect their exclusive rights.
Therefore, it is always advisable to activate trademark and patent search tools to ensure constant monitoring of new trademark filings that could conflict with one's own industrial property titles.
Depending on the different types of attack, specific defensive actions are possible.
Trademark protection: opposition
The first form of protection is the use of the opposition procedure against the registration of an identical or similar trademark by other parties.
Opposition is an administrative proceeding by which the holder of an earlier right requests the refusal of the grant of a subsequent trademark deemed to be harmful.
The opposition must be filed within mandatory deadlines – in Italy, within 3 months from the publication of the subsequent trademark. Once this deadline has expired, it is only possible to act through ordinary judicial actions. For this reason, it is preferable to activate a watch service so as to be able to challenge subsequent trademarks while opposition is still possible.
If, on the other hand, you receive an opposition against your own trademark application, it is possible to resolve the dispute amicably with an agreement, defend the trademark by demonstrating that there is no likelihood of confusion, or do nothing and await the Examiner's decision.
The decision is made by the Examiner based on a comparison of the trademarks and the products/services. In the decision refusing or granting the opposition, the Office determines whether the losing party must reimburse, in part or in full, the other party's costs related to the opposition fee (Euro 250.00) as well as, within the limit of Euro 300.00, the professional representation costs in the proceeding. The decision may be appealed before the Commissione Ricorsi (Board of Appeals).
Otherwise, faced with a trademark infringement, several solutions are available: from sending a cease-and-desist letter to the alleged infringer to initiating legal action. This latter approach, however, involves very long timelines: it is often necessary to wait three to four years before obtaining a first-instance decision. This is why attempting to resolve the conflict out of court is often advisable.
Trademark protection: the cease-and-desist letter
Another solution is to send a cease-and-desist letter to the alleged infringer, informing them of the suspected existence of a conflict between the industrial property title under protection (be it a trademark, a patent, a design/model, or other) and the one used by them.
This procedure proves effective especially in cases of unintentional infringement, as the party who has become involuntarily responsible almost always ceases the unlawful activity or initiates a negotiation.
Trademark protection: out-of-court proceedings
There are essentially two out-of-court dispute resolution proceedings: arbitration and mediation.
Arbitration consists of a procedure that is less formal and faster than judicial proceedings. Furthermore, an arbitral award is easier to enforce internationally.
In mediation, the parties can maintain control over the dispute resolution process, which can be useful for maintaining good relations with a company that might become a commercial partner in the future.
Trademark protection: judicial actions
When opposition is not possible or an out-of-court agreement has not been reached, the only option left is to take legal action. A trademark owner may initiate an infringement action or – if the action is directed against a filed and/or registered trademark – initiate an invalidity action. Legal actions are very long and costly but, in certain cases, they are the only tool available to prevent the continuation of the harmful activity.
Based on this proceeding, the trademark owner can first and foremost obtain an injunction from the judicial authority prohibiting the manufacture or marketing of whatever constitutes a trademark infringement. To compel the infringer to comply with the judgment, the judicial authority may set a sum due for every violation or non-compliance subsequently observed and for every delay in the execution of the measure.
The judicial authority, with the judgment establishing that a trademark infringement has occurred, may also order the destruction of everything that is the object of the infringement. Alternatively, it may order that the objects produced, imported, or sold in violation of the right, as well as the specific means uniquely intended for their production, be assigned in ownership to the holder of the infringed title.
Ordinary proceedings are, however, generally initiated to obtain compensation for damages suffered by the trademark owner due to the infringement activity. To this end, the Codice della Proprietà Industriale (Industrial Property Code) has expressly established that the Judge, in determining the sum due as damages, may take into account all relevant aspects, such as the negative economic consequences suffered by the holder of the infringed right (including loss of profits), the benefits realized by the infringer and, in appropriate cases, elements other than economic ones, such as the moral damage caused to the trademark owner.
The precautionary proceeding
The civil infringement action, as mentioned, is generally longer, unless the conditions exist to promote a precautionary recourse based on the urgency of the situation: in such a case, it will be possible to obtain description, seizure of the counterfeit products, an injunction, as well as, accessorily, the publication of the precautionary order in national and/or local newspapers.
- Description is generally requested to obtain a clearer idea of the ongoing infringement phenomenon or when one wants to prevent the infringer from making evidence of their unlawful activity disappear. It is ordered by the Judge without prior notification to the other party (ex parte). Through description, a trademark owner asks the judicial authority to order the description of the objects constituting the infringement of their trademark, as well as the description of the means used to produce them and the evidence concerning the reported activity.
- With seizure, a trademark owner can request the confiscation of the goods that constitute an infringement of their trademark, as well as the means used for their production and the evidence concerning the reported violation. Generally, seizure is ordered by the Judge without having previously summoned the other party (i.e., the infringer).
- With an injunction, the Judge (who may always act without having first summoned the counterparty) orders the author of the tort to cease all illegal activity, for example, the manufacture, sale, or import of products bearing counterfeit trademarks. On that occasion, for every violation or non-compliance with the injunction order or for delays in its execution, the Judge may set a sum of money (a penalty) to be paid by the infringer as compensation to the trademark owner.
Customs protection
Another method of trademark protection is customs protection: in Italy, a trademark owner can prevent the importation of goods suspected of infringement based on EC Regulation no. 1383/2003; this legislative provision allows the blocking of suspicious goods at all Italian borders (Regulation 1383/2003 was replaced by the new EU Regulation no. 608/2013, in force since January 1, 2014).
To initiate the control procedure for one's goods bearing a trademark (valid for one year and renewable for subsequent periods also of one year), it is necessary to submit an application to the Agenzia delle Dogane (Customs Agency) in Rome, via Carucci 71, indicating which trademarks the owner wishes to monitor (attaching a simple copy of the relative registration certificates) and providing as much information as possible to help customs agents distinguish the genuine product from the counterfeit one.
In the event that a customs office considers a product suspicious of infringement, it will contact the owner of the monitored trademark, who will have a period of ten working days to indicate to the customs office whether the blocked goods are original or counterfeit. If the goods are counterfeit, the customs office will proceed with their seizure, and a criminal proceeding will be automatically initiated. The trademark owner has the right to be informed about the origin and destination of the counterfeit goods in order to act accordingly, including initiating a civil action, for example, against the final recipient, if deemed appropriate.