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Legal defence: If we have been using a name for some time and someone else registers it, what can be done?

If we have been using a name for some time and someone else registers it, what can be done?

First of all the acquired prestige of the company during the time needs to be considered. The art. n 7 of the Industrial Property Code states that one of the main requisites needed for registering a trademark is the novelty, whilst art. n. 12 of the same Code lists some cases where this novelty is not there. Particularly the letter c) foresees that are not new the marks identical or similar to a mark already renown as a firm, denomination or sign used by others, if because of this or because of the similarity of the kind of business and products or services for which the mark was registered, a risk of confusion could be created amongst the public.

The first aspect to be assessed is whether the company, having registered the trademark, is running a business similar to ours and because of this, creating confusion on the market. Once ascertained this, we need to evaluate if our firm, previously used, was known at the time of our competitor’s mark application. If in fact, the public knew it, because of a deep advertising national campaign, the participation to exhibitions and fairs, then the registered mark is void due to the lack of novelty and legal action could be started to get a declaration to this effect. If, on the other hand, our firm has only ever been known locally, then the subsequent registered trademark would be valid. In this case there will only remain a pre-use right, following which it could still be used but only in the limits within which it was used up till then.