The Italian Supreme Court on the foreign extension of the co-ownership of an Italian trademark

On 4 July 2016, with ruling no. 13570, the Italian Supreme Court commented on the possibility of extending the co-ownership of an Italian trademark to an identical foreign trademark.

The issue relates to the ownership of some applications for the Community, International and foreign registration of the word trademark “LEGEA”. The Naples IP Court acknowledged that such ownership belonged to the same four subjects already co-owners of the identical Italian trademark used as a basis for the applications at issue. The decision was, however, appealed by one of those subjects, which objected to having filed the applications only in its own name. Nevertheless, the Court of Appeal of Naples rejected the appeal, and the unsuccessful co-owner appealed again before the Supreme Court.

In the decision under review, the Supreme Court first stated that in general there is no possibility of extending the effects produced by an Italian ruling on the Italian trademark co-ownership to foreign States, because of the principle of trademark territoriality. Thus, the ownership of a trademark can be assessed only by the Trademarks Office or by the Judges of the State in which that trademark has been requested/registered and the decisions of the latter cannot produce effects outside the State. In the case at issue, therefore, the fact that the Italian trademark belongs to four co-owners does not exclude the possibility for one of the latter to register the same trademark abroad only in its own name.

However, to the Supreme Court, the abovementioned general principle cannot be applied in matters of International and Community trademarks based on an earlier Italian trademark owned by several co-owners.

In fact, the Supreme Court stated that, in case of a Community trademark based on an earlier Italian trademark, it would not be lawful for a national trademark owned by some owners, having become a Community trademark, to be owned by different owners, because in this case there would be two identical trademarks, both valid in Italy, but with different owners, and this is not allowed either by Community or Italian law. In this context, the co-owners of the original trademark, excluded from the identical Community trademark registration, may start proceedings before the national Court identified in the Regulation (EC) No. 44/2001 in order to enforce their ownership towards the registering Community trademark, pursuant to Article 106 of Regulation (EC) No. 207/2009 on the Community trademark. In the case at issue, the Supreme Court continued, the national Court identified in the Regulation (EC) No. 44/2001 is the Italian one, given that the assessment at issue concerns the co-ownership of an Italian trademark; co-ownership which can also be extended to the registering Community trademark.

A similar reasoning must also be applied to the application for International trademark registration based on the earlier Italian trademark: both trademarks, in fact, are interdependent, to the point that all changes related to the national trademark used as a basis, including the assessment of its (co)ownership, shall necessarily be communicated by the competent national Office to the World Intellectual Property Organisation (“WIPO”) – which itself will communicate them to Trademark Offices of the States designated in the application for International trademark registration – in order to update the International trademark. The Supreme Court also pointed out that, in the present case, since the basic trademark for the International trademark registration is an Italian trademark it is up to the Italian Court to determine any issue relating to the International trademark registration, including the issue concerning the co-ownership of the original trademark.

In light of the above, the Supreme Court stated that the Court of Appeal properly established that the decision on the trademark co-ownership, even if having effects only in Italy, might produce expansionary effects towards applications for Community and International trademark registration. Such effects, however, do not directly come from the judgment, but arise from its possible and subsequent use before competent European and International bodies.

This assumption cannot be applied to applications for the registration of national trademarks in foreign States, as the latter are not based on a previous trademark, hence they are totally independent from the Italian trademark. In such a case, the above-mentioned general principle of non-extension of the co-ownership should be applied. Thus, the Supreme Court quashed in part the judgment under appeal insofar as it incorrectly applied the extension of the co-ownership of the Italian trademark to applications for foreign national trademark registration.