NO GROUNDS FOR EX OFFICIO DECLARATION OF INVALIDITY OF A TRADEMARK IN ITALY

On 28 February 2018 the First Civil Chamber of the Italian Supreme Court issued a very interesting and clear decision (no. 4771/2018) concerning the room under Italian laws for a declaration ex officio of invalidity of a trademark.

The Supreme Court expressly excluded such power for the Italian courts even if the trademark might be declared, on the merits, invalid due to absolute grounds of invalidity.

Namely the Supreme Court rejected the appeal concerning the decision of the Court of Appeal of Florence not to declare ex officio the invalidity of a trademark, allegedly, contrary to public order or to accepted principles of morality.

The Supreme Court confirmed the decision of the Court of Appeal of Florence and focused its decision on the interpretation of articles 121 and 122, para. 1, of Legislative Decree no. 30/2005 (“IP Code”). Such interpretation may be summarized as follows:

  • Article 122, para 1, IP Code provides that anyone, who has an interest, is entitled to challenge the validity of a trademark due to absolute grounds of invalidity. Likewise, the public prosecutor is entitled to challenge the validity of a trademark due to absolute grounds of invalidity. The involvement of the public prosecutor in the proceeding is not compulsory, indeed.
  • Article 121 IP Code provides that the burden of proof is upon those challenging the validity of the trademark.
  • Neither art. 121 nor art. 122 IP Code expressly provide for a power of the Court to challenge ex officio the validity of a trademark.
  • According to several past decisions of the Supreme Court (e.g., no. 3109/1983 and no. 21472/2013), a trademark must be considered valid by the Court unless it is challenged by an official counterclaim of the defendant. Such settled case-law is aligned with art. 127 EU Reg. 1001/2017 (former art. 99 Reg. 207/2009) that expressly provides for a presumption of validity of a trademark “unless its validity is put in issue by the defendant with a counterclaim for revocation or for a declaration of invalidity“.

In light of the above, from the decision of the Supreme Court no. 4771/2018, it can be inferred that the declaration of invalidity of a trademark for absolute grounds of invalidity is subject to the same rules applicable to the declaration of invalidity for “relative grounds” of invalidity.

Thus, even in case of “absolute grounds of invalidity”, it shall be a decision and burden of the defendant to put or not to put in issue the validity of a trademark and demonstrate the relevant absolute grounds of invalidity, as for the case of “relative grounds” for the declaration of invalidity of a trademark.

In other words, with respect to the declaration of invalidity of a trademark even for absolute grounds of invalidity, the defendant cannot rely on the autonomous initiative of the Court, who, in the event that it finds some absolute grounds of invalidity of the trademark not claimed by the defendant, cannot declare the invalidity ex officio but rather it should “urge” (this is the term used by the Supreme Court) the public prosecutor to evaluate if and to what extent claim and demonstrate the invalidity of the trademark for absolute grounds of invalidity.