The Tribunal and the Court of Appeal of Catania ruled on the subject of trademark cancellation for non-use and the related burden of proof, providing interesting interpretative coordinates in this regard.
The dispute
The case originates from the application for a declaration of trade mark cancellation for non-use brought in 2018 before the specialized enterprise section of the Court of Catania by the French company Societé Ecocert S.A against Angelo Salvatore Maugeri, formerly a business partner of the plaintiff and then holder of three national trade mark registrations for the signs ECOCERT and ECOCERT ITALIA, which are the subject to the dispute (on the ground that they were filed in bad faith).
Specifically, the plaintiff argued that the marks in question had not been used by the defendant for a continuous period of five years from the registrations and that this was sufficient to a declaration of revocation for non-use pursuant to Articles 24 and 26 of the IPC.
In support of its argument, Ecocert S.A. produced the results of a market survey, which showed that those distinctive signs were not known in the Italian certification market, as well as the results of an online search demonstrating both the non-existence of the contact details of Maugeri's company - the alleged user of the contested marks - and the absence of the contested marks in the main search engines Google and Bing, as well as on the most popular social pages.
For his part, the defendant enclosed a number of commercial materials such as brochures commissioned from him, letterheads and graphic designs of various kinds, no invoice, all bearing the trademarks subject to the dispute.
Judgment of first instance
In judgment No. 4495/2023 the Court of Catania first of all addressed the delicate issue of the burden of proof. In particular, the Court, in application of the principle in force prior to the reform of Article 121 CPI by Legislative Decree 15/2019, by virtue of the law in force at the time the application was filed, held that the proof of the non-use of a trade mark subject to cancellation was on the plaintiff. Such proof could certainly also be validly provided on a presumptive basis.
Consequently, the decision-making body 'in step with the times' deemed sufficient for the purposes of establishing the non-use of the defendant's trade marks “the absence of the same on the web and the lack of identification on the internet of the contact details of the company attributable to Maugeri to which the trademarks refer”. To this must also be added the circumstance, duly documented, according to which “from 2010 onwards, or, in any event, in the period from 2013 to 2018 (i.e. for five continuous years between the registration of the marks and the commencement of the present proceedings), a company owne by Maugeri issued certifications using a distinctive sign other than the contested marks”.
With regard to the documentation produced by the defendant, the Court of Catania held that it was not sufficient for proving the actual use of the trade marks in light of the constant European and national case law, according to which it is necessary to provide documentation from which “an actual use of the distinctive sign for the purposes of the distribution of the relevant service on the market can be deduced”; documentation that Maugeri had not been able to produce.
Appeal judgment
The case then found its epilogue before the Court of Appeal of Catania, which, in judgment no. 1482/2024, fully confirmed the first instance ruling, rejecting all the objections raised by the appellant Maugeri.
The Court held that the Tribunal was correct in its evidentiary assessment of the lack of use of the trademarks at issue both with regard to the plaintiff's documents and those produced by the defendant, stating that in order to exclude - or ascertain – cancellation for nonuse, it is necessary to verify whether or not there is use of the mark such as to allow the relevant consumers to perceive it as a distinctive element of the service provided.
Final Comment
The decisions referred to, in absolute uniformity with the already consolidated case law on trademark cancellation for non-use, confirmed that such use must be not only concrete, but also commercially relevant. This is aimed at guaranteeing the typical distinctive function of the IP right in question. To this end, the importance of the web and of the materials contained therein or absent therefrom assume a decisive importance in today's assessment.
Article published in today's Lexology Newsletter, written by Barbara La Tella and Daniela Gervasio.