Non-Distinctive Uses of a Trademark: The CJEU’s “Function Theory” (and Its Adoption by Italian Courts) – Future Prospects in Light of EU Trademark Law

Abstract

The paper takes its cue from recent amendments to EU trademark law to scrutinize the issue of non-distinctive uses of another’s mark and of the limits on the exclusive right stemming from the need for the free use of signs or for the protection of fundamental rights other than that of the trademark proprietor. The aim of the study, therefore, is to identify the perimeter of the exclusive right conferred by a trademark on its proprietor so as to understand whether the latter can claim protection against any non-authorized use of his or her mark, even if the function of such use is not “typical” for distinguishing goods and services. Doubts as to interpretation arise from the recent approach of the CJEU, which on the one hand introduces interference of third-party use of a trademark with the protected functions thereof as a yardstick for assessing the unlawfulness of such use and, on the other, broadens and multiplies such functions. The latest amendments to EU trademark law seem to indicate a different future path to follow in assessing cases of non-distinctive use, reaffirming that use with a distinctive function is the foundation of the exclusive right conferred on the trademark proprietor and determines the extent thereof.