États-Unis d'Amérique
Marques de fabrique ou de commerce
[Follow-up question from the United States] Can the owner of an unregistered well-known trademark recover damages and obtain injunctive relief related to the use of that mark in Italy?
As already explained in item 5 of our replies to the questions by the United States, special protection of well-known trademarks, as required by Article 16.2 of the TRIPS Agreement, is provided for in Article 17, paragraph 1(h) of Royal Decree No. 929 of 1942, as replaced by the recent Legislative Decree No. 198 of 1996. Please note that this provision does not require a well-known mark to be registered in Italy, whereas the other enforceable trademarks under Article 17, paragraph 1(d) to (g) must be registered in Italy or effective in Italy. Under Article 47 of Royal Decree No. 929 of 1942, as replaced by Legislative Decree No. 480 of 1992, the trademark is null and void if it is registered in breach of Articles 16 and 17 of the same Decree, including, obviously, the above-mentioned provision in Article 17, paragraph 1(h). This means that any interested party - including, therefore, the owner of the well-known trademark - may bring legal proceedings to obtain nullity of the mark. Generally speaking, in any dispute an interested party may ask the court for provisional and precautionary measures necessary to ensure the effects of the final ruling required (Code of Civil Procedure, Articles 700 et seq.). The infringer may be sentenced to payment of damages under Article 66(2) of Royal Decree No. 929 of 1942, as amended by Legislative Decree No. 480 of 1992.