The aim of these articles is to keep our Clients and Associates updated about developments in the sector of Intellectual Property in general and our firm in particular. In this way, we wish to provide a broader view of the tools that the field of trade marks, domain names, patents, designs and related rights offers to entrepreneurs to enhance and protect their efforts in researching and developing new solutions and ideas.
International Trade Marks Designating Italy: Jurisdiction, Standing and Genuine Use
On 14 September 2026, the IP Specialized Court of Rome issued judgment No. 12804, which we consider of particular interest for foreign trade mark owners and IP counsels managing international registrations designating Italy.
The decision addresses an action for revocation for non-use concerning the Italian designation of an international trade mark and provides useful clarifications on three practical aspects: the jurisdiction of Italian courts, the standing required to bring a non-use action, and the evidence that a trade mark proprietor must provide to demonstrate genuine use in Italy.
The Case: A Non-Use Revocation Action Brought by a Competitor
The dispute arose from an action brought by an Italian company operating in the personal care, hygiene and cosmetics sector against a Bulgarian company active in the same field.
The claimant, which owned trade marks used for hair-care products, asked the Rome IP specialized Court to establish the non-use in Italy of International Trade Mark No. 680733, registered in 1997 in Classes 3, 5 and 21 and designating, among other countries, Italy.
The action was based on Article 24 of the Italian Industrial Property Code (IPC), under which a trade mark is subject to revocation where, within the relevant five-year period, it has not been put to genuine use by its proprietor or with its consent for the goods or services for which it is registered, or where such use has been suspended for an uninterrupted period of five years, unless there is a legitimate reason for non-use.
The claimant stated that it had carried out specific market research which, according to its findings, indicated an absence of genuine use of the trade mark in Italy for a significant period.
Jurisdiction: Italy, not the EUIPO
The first issue addressed by the Court was jurisdiction.
The proprietor of the international registration argued that the dispute should fall within the jurisdiction of the EUIPO or, alternatively, the courts of the proprietor’s home country.
The Court rejected both arguments.
The dispute concerned an international trade mark designating Italy, rather than an EU trade mark. The EUIPO therefore had no jurisdiction. Under the Madrid System, an international registration produces, in each designated country, effects corresponding to those of a national trade mark. Accordingly, a dispute concerning the protection of the Italian designation falls within the jurisdiction of the Italian courts.
In this case, since the defendant was a foreign company, jurisdiction was attributed to the Specialized IP Court of Rome, pursuant to the Italian rules governing intellectual property disputes involving foreign defendants.
This is an important point for international trade mark owners and foreign counsels: a judicial action for revocation for non-use concerning the Italian designation of an international registration is dealt with in Italy, rather than by the EUIPO or by the courts of the proprietor’s home country.
It should also be noted that, while in that case the non-use revocation action was started before the Court, since 29 December 2022, revocation for non-use may alternatively be sought through an administrative proceeding before the Italian Patent and Trade mark Office (UIBM). The administrative route therefore now exists alongside the judicial route.
Who May Bring a Non-Use Action?
The judgment is also noteworthy for its clarification of standing to bring an action for revocation for non-use.
The defendant challenged the claimant’s standing and interest in bringing the proceedings. The Court rejected this objection, relying on Article 122 IPC, which grants standing to bring an action for revocation to anyone having a relevant interest.
According to the Court, such an interest may exist where the claimant operates in competition with the trade mark proprietor in the same economic sector, and the continued existence of the challenged trade mark may represent a concrete obstacle to the claimant’s business activities.
Importantly, the claimant does not have to demonstrate that one of its existing rights has already been infringed by the challenged trade mark. It is sufficient that the third-party trade mark right constitutes a concrete interference with the claimant’s economic activity.
The decision therefore confirms that the interest required to bring a non-use action is not necessarily linked to an existing infringement. A competitor may have standing where the continued existence of the trade mark itself creates a concrete impediment to its business activities.
This is a relevant point for trade mark owners and foreign counsels alike, as it means that an unused registration may become vulnerable to challenge even where no infringement action could otherwise be brought by the party seeking its revocation.
Genuine Use Must Be Proved in Italy
The substantive issue concerned the alleged non-use of the trade mark in Italy.
The Court reaffirmed that genuine use must be real and effective, rather than merely symbolic or occasional, and must demonstrate an actual presence on the relevant market and fulfil the trade mark’s function as an indication of commercial origin.
Importantly, the burden of proof lies with the trade mark proprietor. Once non-use is put in issue, the proprietor must demonstrate genuine use in Italy for the relevant goods or services and during the relevant five-year period.
The evidence must therefore establish, in a sufficiently clear manner:
- when the trade mark was used;
- where it was used;
- for which goods or services; and
- whether the use was sufficiently significant to demonstrate a genuine presence on the relevant market.
Limited or Undated Evidence May Not Be Sufficient
The evidence submitted in the proceedings illustrates the Court’s approach.
Documents concerning sales, distribution agreements and participation in trade fairs in 2008 and 2014 could not establish use during the relevant five-year period. Similarly, screenshots showing the products being offered online were considered insufficient because they were not dated and therefore could not establish when the relevant commercial activity had taken place.
The Court also disregarded evidence relating to use after the commencement of the proceedings.
The remaining evidence consisted principally of a limited number of invoices and delivery documents concerning sales in Italy between May 2017 and May 2022, with an aggregate value of approximately EUR 2,500 over the entire five-year period.
In the circumstances of the case, the Court found this evidence insufficient to establish genuine use. The assessment was not based solely on the value of the sales, but on the overall circumstances, including the limited number of transactions and the absence of evidence of advertising or promotional investment supporting the mark’s presence on the Italian market.
The Court therefore declared the Italian portion of the international trade mark revoked for non-use in respect of the relevant goods.
Practical Implications for International Trade Mark Portfolios
The decision provides several practical reminders for foreign trade mark owners and IP counsels managing Madrid System portfolios.
For judicial proceedings, disputes concerning the Italian designation of an international trade mark registration fall within the Italian judicial system. Since December 2022, the administrative route before the UIBM has also been available as an alternative.
Second, the need to maintain and document genuine use in Italy. Where non-use is challenged, the proprietor bears the burden of proving use during the relevant period.
For international portfolios, it is therefore important to preserve evidence that clearly connects the trade mark with:
The Italian Market + the Relevant Period + the Relevant Goods or Services
Finally, the judgment highlights the importance of considering the potential exposure of unused registrations to challenges brought by competitors with a concrete economic interest, even where no existing right has been infringed.
For foreign counsels and international brand owners, these considerations may be particularly relevant when reviewing Madrid System portfolios designating Italy, both in assessing the scope of protection and in ensuring that adequate evidence is available to support continued protection.
INTERPATENT assists international trade mark owners and foreign IP counsels with the protection, enforcement and management of trade mark portfolios in Italy (and Europe), including Madrid System designations and proceedings concerning revocation for non-use.