Brand Protection

Defense strategy for registered trademarks

Avoid forfeiture and archive evidence of use.

 Art. 26. CPI Forfeiture

The trademark lapses:

1. a) for vulgarization pursuant to Article 13, paragraph 4;
2. b) for supervening unlawfulness pursuant to Article 14, paragraph 2;
3. c) for non-use pursuant to Article 24.

Art. 24. CPI Use of the trademark

1. Under penalty of forfeiture, the trademark must be used effectively by the owner or with his consent (it is important to register licenses granted, for example, in some foreign countries where use by a licensee is not recognized unless the license is registered with the competent local trademark office, even if it has been transcribed at the WIPO), for the goods or services for which it is registered, within five years of registration. Such use must not be suspended for an uninterrupted period of five years, unless the non-use is justified by a legitimate reason.
2. For the purposes of this article, use of the trademark in a modified form that does not alter its distinctive character, as well as the affixing of the trademark to products or their packaging in the State for the purpose of exporting them, are considered equivalent to use of the trademark.
3. Except in the case of trademark rights acquired by third parties through filing or use, revocation cannot be enforced if actual use of the trademark has begun or resumed between the expiration of the five-year period of non-use and the filing of the application or objection for revocation. However, if the owner makes preparations to begin or resume use of the trademark only after learning that the application or objection for revocation is about to be filed, such commencement or resumption will not be considered unless it occurs at least three months before the filing of the application or objection for revocation; however, this period is only relevant if it elapses after the expiration of the five-year period of non-use.
4. Furthermore, the forfeiture for non-use will not take place if the owner of the unused trademark is also the owner, at the same time, of another or other similar trademarks still in force, at least one of which he actually uses to distinguish the same products or services.

Demonstration of use, Opinion Surveys have very high costs.

It is good practice to prepare a file on the use of the trademark within the company. in which to add documentation annually "also in electronic format, taking care to keep backup copies".

By way of example, but not limited to, keep a copy showing the trademarks used:

• - trade fair catalogues;
• - print with date of website pages;
• - print monthly and annual website statistics;
• - web domains also used as redirects print screen activation date and owner;
• - Invoices should include item descriptions that identify the brands used, and analytical accounting should be used to trace the sales volumes of individual products sold under the respective brands for at least an annual period, and geographical area (e.g., for Italy, at the provincial or regional level);
• - include the logos of registered brands on letterhead and invoices;
• - print an annual sales report (number of units and revenue) for each brand by country, Italy (region, province);
• - attach to the report 10/15 sample invoices for each brand used per province and/or region;
• - retain advertising documentation, including video recordings, copies of newspaper articles and publications;
• - copy of the licenses for use granted and/or printout of the transcripts of such licenses at the competent trademark offices;
• - Proof of advertising and sponsorship expenses incurred. Invoices and sponsorship contracts.

This way, if such documentation is needed, you already have the file ready from which to examine the relevant documentation to present as proof of use.

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