Trademark Validation by 31 December 1997

3 December 1997

This is to draw your attention to Art.48 of the Trademark Law that after the 1992 updating states that:

".1 The holder of a previously-registered trademark (according to Article 17, Section 1, letters d) and e)), and the holder of a prior use right which is not simply known locally, who,aware of having tolerated for five consecutive years the use of an identical or similar subsequently-registered trademark, can neither ask for the declaration of nullity of the subsequently-registered trademark nor oppose the use of the same for products or services in relation to which said trademark has been used on the basis of their previously-registered trademark and their prior use, unless the subsequently-registered trademark has been asked in bad faith. The holder of the subsequently-registered trademark cannot oppose the use of the previously-registered trademark or the continuation of the prior use".

By virtue of this rule, during the five-year period provided for by the law, an identical or similar subsequently-registered trademark, filed for identical or similar products and/or services, is not void, on the contrary it is simply voidable, following the filing of the application for nullity by the person entitled or by third parties interested in this.
After the five-year period, and when nullity has not been requested, the subsequently-registered trademark is validated and thus it cannot be voided anylonger. Consequently everybody can use it freely.

On 31 December 1997 all possible trademarks, identical or similar to yours, will be validated, registered by third parties before 30 December 1992 (date of the above-mentioned new trademark law).
All necessary actions aimed at cancelling, or at least at limiting the use of trademarks conflicting with yours, have to be started not later than this date. With a view to verify the status of your trademarks it is then advisable to carry out a prior art search among Italian trademarks, International trademarks having validity in Italy and Community trademarks.
If the results of this search should reveal the existence of identical or similar trademarks, then, it would be advisable to send, before 30 DECEMBER 1997, a warning and cease letter to the holder of said trademarks, this to avoid their validation.


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