The protection of a registered trademark is neither unconditional nor automatic over time, but rather presupposes actual and verifiable use of the sign on the market. In litigation, the lack of concrete evidence of use may undermine the entire legal action.
The following analysis examines a recent decision of the Milan Court, which reiterates precisely these principles.
Index:
- Actual use of the trademark as an essential prerequisite for its protection
- The proof of use
- Trademark use must be attributable to the owner
- Conclusions
Actual use of the trademark as an essential prerequisite for its protection
As is well known, the registration of a trademark alone is not sufficient to guarantee its protection over time: the sign must be genuinely used to distinguish the goods or services for which it has been registered, and proof of genuine and continuous use (although not necessarily well-known use) must be available, at the latest, within five years from registration.
The proof of use
In its decision of 14 October 2025, the Court of Milanconfirmed the above principle in a case in which a company bringing an action for trademark infringement was challenged by the defendant, who – as was its right in the case of trademarks registered for more than five years – requested proof of use of the mark.
In response to this request, the claimant produced only an exclusive licence agreement (which, moreover, provided for minimum turnover or minimum royalty obligations on the part of the licensee).
The Court, however, rightly held that this was not a sufficient evidence of trademark use. It is instead essential to prove that the sign actually reached consumers, thereby performing its distinctive function. In other words, the trademark owner should at least have demonstrated the actual carrying out of some form of advertising activity and – above all – the effective sale on the market of trademarked goods.
Trademark use must be attributable to the owner
The decision further emphasizes that trademark use must be consensual and attributable to the trademark owner or its successors in title. Use of the trademark by third parties without an express connection to the owner does not interrupt the period leading to revocation for non-use; this, too, is a well-established principle.
Otherwise a trademark owner could attempt to rely even on use made by infringing third parties in order to avoid revocation of its registration.
Conclusions
Cases such as this demonstrate how strategically risky it can be to initiate legal proceedings without first verifying the strength of the evidence of trademark use. Consulting in advance with a trademark law specialist, or at the very least relying on qualified assistance in the management of litigation, can help avoid the economic and reputational consequences of an adverse judicial outcome.