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Legal defence: Can damage compensation be requested to someone for using someone else’s trademark?

Can damage compensation be requested to someone for using someone else’s trademark?

A trademark’s owner can prevent anyone using it and ask compensation damages to anyone using it without his authorisation. However, let’s suppose that for several years another company has used your own name without having made any opposition. In the first place, you need to establish whether or not a contract has been made between the holder of the trademark and the company using it with which this latter one has been authorised to use it: if there is a contract, in writing, then you need to resolve it according to the terms provided in the contract, and after this you would be easily able to act against them.

If there has been no agreement, the fact that no opposition has ever been made to this use is considered an act of acceptance that can lead to the confirmation of the trademark used by the other company, therefore if we had the knowledge of this fact for more than 5 years and we have done nothing to prevent it, the user could happily continue using it as per Industrial Property Code art. n. 28. Another factor to assess before taking legal action is the one related to the validity of our trademark and the strength it could have. If this is a very generic name registered without having done any prior search, before doing anything it is wise to do a search in order not to have any bad surprises. To resume this, it is possible both to prevent the use and ask for damage compensation, but first several elements of vital importance need to be evaluated before claiming final victory.