Lambretta vrooming away: Italian Supreme Court rules that mark can be revoked for non-use even if it is still well-known

Abstract

Scooters India Ltd v Brand Concern BV, Corte di Cassazione (Italian Supreme Court), First Chamber, judgment of 28 March 2017, No 7970/17 The ltalian Supreme Court has ruled that for a well-known trade mark to be revoked for non-use, the only condition is lack of genuine use during the statutory period; whether, due to its well-known character, the mark is still in the minds of consumers is not a relevant factor when deciding on a revocation request. Article 24(1) of the Italian Intellectual Property Code (IPC) lists two grounds of revocation of trade marks for non-use: i) if, within five years from the date of the registration, the mark is not used by the rightholder in relation to the products for which the mark is registered; ii) if the use of the mark is suspended for a continuous period of five years. Before the enactment of the IPC revocation for non-use was governed by Article 42(1) of the Royal Decree 929/1942. That provision was similar to the one in the IPC but not in relation to the length of the relevant non-use period. The original text of Article 42(1) of the Royal Decree 929/1942 provided, in fact, for a non-use period of three years. This period was subsequently extended by Legislative Decree 480/1992 to five years as is currently required by the IPC.