États-Unis d'Amérique
Marques de fabrique ou de commerce
6. Article 42(1) of the Italian Trademark Law allows the proprietor of a trademark to present “legitimate reasons” to justify continued registration despite non-use of a trademark. Please explain the types of circumstances that would be sufficient to satisfy this provision, including, where relevant, results of administrative or judicial decisions addressing this issue.
Non-use of a trademark does not entail its forfeiture if the owner can show a valid [legitimate] reason therefor. Thus, Article 42 of Royal Decree No. 929 of 21 June 1942, as replaced by Article 39 of Legislative Decree No. 480 of 4 December 1992, is in line with Article 10(1) of the First Council Directive 89/104/EEC of 21 December 1988. No decisions of courts are known to exist as regards application of the new legislation. However, it should be pointed out that the latter is equivalent to the original wording of Article 42, whose application was limited, in light of the decisions rendered, to very few circumstances arising independently of the will of the owner - such as war or sequestration of the undertaking (Brescia Appellate Court, 9 February 1956; Milan Appellate Court, 16 June 1953).