Estados Unidos de América

Italia

Marcas de fábrica o de comercio

2. TRIPS Article 20 states that use of a trademark shall not be encumbered by special requirements such as use with another trademark. However, Article 12 of the Italian Trademark Law states that “a merchant may affix his own mark to the goods he puts on sale, but may not remove the mark of the producer or merchant from whom he has received the products or goods”. Please explain how this provision of Italian law complies with TRIPS Article 20.

Under Article 12 of Royal Decree No. 929 of 21 June 1942, the owner of a trade name may apply the latter to the products offered for sale by adding it to the manufacturer's trademark. This provision, which is not mandatory as to its nature, cannot result in affecting the knowledge or distinctiveness acquired by the trademark, since a producer who is the owner of a trademark has the right to prescribe modalities for the use of such trademark by the seller and all subsequent dealers (see judgment No. 3211 of 15 May 1986 by the Court of Cassation, Civil Section - Division II). Furthermore, it is prohibited to make use of one's own trademark in a manner capable to mislead the public, especially as regards nature, quality or origin of a product (Article 11 of Royal Decree No. 929 of 21 June 1942, as replaced by Article 12 of Legislative Decree No. 480 of 4 December 1992).