Tolerating the use of the trademark by someone who copied it can give way to the loss of someone’s rights?
Interesting and complicated case. Tolerance continued over 5 years, to which you refer, starts from the time when the owner of the prior trademark has become aware of the use by third parties, awareness that is supposed from the time of applying for its application for registration if, of course, during that time the same was used. In order to defend oneself other factors need to be considered. First of all, it needs to be evaluated if the marks also have a graphic part differentiating them even if both using the same word, and mainly, evaluating if the company, should it be foreign, extended the mark in Italy, starting from when and in what form. Besides, it also needs to be seen if the products for which the other company has registered the mark, are similar or equal to the ones of the previous one. If this was not the case, then it would be very difficult claiming anything, not being a famous mark known at national level. The other aspect of substantial importance is the concrete use of it by the foreign company in Italy: if it has not been used in our country for 5 years then it has lost its validity and no claims can be made.