With a recent ordinance (09.02.2022) the Court of Turin has expressed itself regarding the counterfeiting of some trademarks registered by a wine cellar, mainly for wine products in class 33. In the aforementioned order, the Court of Turin also took the opportunity to clarify the difference between the legal institution of validation, provided for by art. 28 of the Industrial Property Code, and the different, albeit relevant, phenomenon of tolerance with respect to the use of a later trademark by the owner of the earlier registered trademark.
The trademarks involved in the case, which were written on the labels of bottles, consisted in particular of the word "SOLO" accompanied by the type of wine (pinot, prosecco, shiraz, etc...) or alcoholic beverage (grappa). These were trademarks regularly registered by the owner at a national level.
In particular, the trademark invoked in the precautionary proceedings was the following:
The appellant, a wine cellar in Frascati, therefore contested the use of the de facto trademark "SOLO PINOT NERO" for wine products by a competitor in the Piedmont area, claiming infringement of its earlier trademark registered under art. 20 C.p.i. (the respondent used a trademark identical or very similar to that of the appellant for identical products).
The defense of the respondent was based first of all on the exception, rejected by the judge, of the validation pursuant to art. 28 C.p.i.. This provision states that the owner of a registered trademark who, for 5 consecutive years, tolerates, being aware of it, the use of a later registered trademark that is the same or similar, cannot therefore ask for it to be declared null and void or oppose its use for the goods or services in relation to which the said trademark has been used.
The ratio of this institute is to be found in the balancing of two different interests: on one hand, that of the owner of the later trademark to avoid seeing the investments made over the years for the accreditation of his own sign cancelled, and on the other hand, that of the consumer to avoid seeing a situation suddenly changed which is now consolidated.
The norm is clear in reserving the benefit of validation only to subsequently registered trademarks and the prevailing jurisprudence is in line with the literal interpretation of the norm. However over the years, also on the basis of some doctrinal ideas, this literal interpretation has seemed to be lacking. Just in the wine sector and just the Court of Turin in 2016 in fact had clearly left to glimpse the possibility of an analogical interpretation (extension) of the rule on validation also to trademarks of fact.
With judgment no. 2256/16 of 22.4. 16 the Court of Turin in fact had clearly argued about the advisability of extending the benefit of validation to de facto trademarks: according to the Court, since the de facto trademark is protected by the rules on unfair competition, rules that implement "principles of protection of the wealth produced by investments and aversion to parasitic initiatives", it must be reached "if not to an analogical application of the institution of validation to unregistered trademarks - at least" to deny protection to a trademark "with respect to equal or similar signs used for a long time in the knowledge and without the opposition of the owner of the trademark".
Well, with the ordinance of February 2022, the same court of Turin seems to go back on its own steps: according to the Court, "Given that it could not be spoken of validation of the trademark, ex art. 28 CPI, because this effect is prescribed only with reference to registered trademarks, the tolerance of the use of the trademark of others, by the owner of the previous registered trademark, could demonstrate the absence of an abstract danger of confusion about the different entrepreneurial origin and involve a limit to the protectability of the previous trademark".
While therefore denying analogical extensions of the validation rule to unregistered trademarks, the Tribunal highlights the relevance, for the purposes of excluding the likelihood of confusion and therefore infringement, of conduct of tolerance with respect to later de facto trademarks by owners of earlier registered trademarks. However, even in the case of tolerance, the Court recalls the limits of its operativeness: "the case of 'tolerance' cannot be recognized where there is no proof of effective knowledge, on the part of the owner of the earlier trademark, of the subsequent use, for a certain period of time, of the de facto trademark of others".
"For the purposes of the recognition of this "tolerance", it is not sufficient a presumed inactivity of the owner of the earlier trademark with respect to the use of the later trademark, but it is necessary that the owner of the earlier registered trademark has put in place, while being aware of such use, behaviors that can be considered as tolerance of such use (Trib. Venezia Sez. PI, 20/10/2006)."
The burden of proof of this tolerance is on the owner of the later trademark. The proprietor of the later trademark must prove, not only that the proprietor of the earlier trademark was aware of the filing of the later trademark, in a concrete manner and not on a presumptive basis, but also that the proprietor of the earlier trademark has shown tolerance to such use for a certain period of time. Therefore, proof (or fumus thereof) of actual knowledge of the use of the later trademark is necessary, because in the absence of actual knowledge of the use of the other trademark, one cannot even speak of tolerance (Turin Tribunal 15/1/2010).