The 5-Year Non-Use Revocation Rule: Challenging Dormant Trade Marks in Italy (Article 24 CPI)

A registered trade mark in Italy that is not genuinely used for a continuous period of five years is vulnerable to revocation. Article 24 of the Industrial Property Code (CPI) establishes the use obligation and the consequences of non-compliance. Since late 2022, Italy has offered both a judicial route and a new, faster administrative route for challenging dormant marks — making non-use revocation more accessible and cost-effective than ever before.

The Legal Framework: Article 24 CPI

Article 24 CPI provides that a trade mark registration is liable to revocation if the mark has not been put to genuine use in Italy in connection with the goods or services for which it is registered within five years from registration, or if use has been suspended for an uninterrupted period of five years, unless there are legitimate reasons (giusti motivi) for non-use.

The five-year period aligns with the standard across the European Union, following EU Directive 2015/2436. The objective is twofold: to clear the register of unused marks that clutter the trade mark landscape, and to prevent the monopolisation of signs that the registrant has no genuine intention of exploiting commercially.

What Constitutes Genuine Use?

Following CJEU case law (particularly the Ansul and La Mer Technology decisions), Italian courts assess whether the mark has been put to genuine use based on several factors:

• Real commercial exploitation: The use must be genuine — meaning actual commercial activity, not token or symbolic use designed solely to maintain the registration. The mark must be used in the course of trade in relation to the registered goods or services.
• Territorial scope: Use must occur in Italy (or, for EU trade marks, in the EU). Export-only use may not suffice if the goods never reach Italian consumers.
• Quantitative threshold: There is no fixed minimum turnover or volume. The assessment is qualitative: whether the use is consistent with the commercial purpose of maintaining or creating market share, considering the nature of the goods, the size of the market, and the scale of the business.
• Form of the mark: Use of the mark in a form differing in elements that do not alter its distinctive character is accepted as genuine use. Minor variations in font, colour, or secondary elements do not break the chain of use.
• Use by licensees: Use by authorised licensees counts as use by the proprietor.

Legitimate Reasons for Non-Use

The trade mark owner can defend against a revocation claim by proving that non-use was due to legitimate reasons independent of the owner’s will. Italian courts, following CJEU guidance, interpret this narrowly. Examples that may qualify include government import bans, regulatory restrictions preventing the product from being marketed, or other circumstances beyond the owner’s control. Business decisions such as delayed marketing plans, restructuring, or strategic holding are generally not considered legitimate reasons.

The Two Routes: Administrative and Judicial

Since late 2022, Italy offers two parallel routes for non-use revocation, following the implementation of EU Directive 2015/2436:

1. Administrative revocation before the UIBM:

• Any interested party may file a revocation request with the UIBM under Article 184-bis CPI.
• The official fee is €500.
• All arguments and evidence must be submitted with the initial filing — later submissions are not permitted.
• The parties have a cooling-off period to attempt settlement.
• If the trade mark owner fails to provide evidence of genuine use within the allotted time, the UIBM grants the revocation.
• The UIBM must issue a decision within 24 months of the filing date.
• The decision may be appealed to the Board of Appeal within 60 days.
• The maximum cost award to the winning party is €600 (including professional fees).

2. Judicial revocation before the Tribunale delle Imprese:

• Any interested party can file a revocation action before the competent Enterprise Court.
• This route is more expensive and time-consuming but allows for a broader range of evidence, witness testimony, and procedural flexibility.
• The judicial route remains available for all grounds of revocation, including those not available administratively.

The two routes are alternative, not cumulative: if proceedings on the same object between the same parties are pending before the UIBM, the court must dismiss its action, and vice versa.

The Proof-of-Use Defence in Opposition

Non-use is also relevant in opposition proceedings. If the earlier mark relied upon by the opponent has been registered for at least five years, the applicant can request that the opponent prove genuine use of the earlier mark during the five years preceding the filing date (or priority date) of the opposed application. If the opponent cannot prove use, or show legitimate reasons for non-use, the opposition is rejected. This mechanism prevents dormant marks from being used to block new applications.

Strategic Recommendations

• Use your mark within five years: Begin genuine commercial use in Italy within five years of registration. Do not treat Italian registrations as indefinite reservations.
• Maintain and archive use evidence: Systematically collect sales invoices, advertising materials, product packaging, distribution records, and online sales data demonstrating use in Italy. Archive these by year and mark.
• Consider the administrative route first: For straightforward non-use revocation, the UIBM administrative procedure (since late 2022) offers a significantly cheaper and faster alternative to court proceedings.
• Request proof of use in opposition: If an opponent cites an earlier mark that has been registered for more than five years, always require proof of genuine use. This is one of the most effective defence strategies.
• Review your portfolio regularly: Identify Italian registrations approaching the five-year mark without use and either commence use, file new applications, or make strategic decisions about maintaining them.

Common Mistakes

• Token use is not genuine use: Minimal or artificial use undertaken solely to maintain the registration, without genuine commercial purpose, does not satisfy Article 24.
• Assuming business difficulties are legitimate reasons: Financial difficulties, changes in business strategy, or delayed product launches are generally not accepted as legitimate reasons for non-use.
• Failing to archive evidence: Even marks that are genuinely used can be revoked if the owner cannot produce evidence at the time of a challenge. Proactive archiving is essential.
• Ignoring the five-year proof-of-use request in opposition: If you are an opponent relying on a mark registered for more than five years, be prepared to prove use. If you cannot, the opposition will fail.

Key Takeaway

Article 24 CPI imposes a clear obligation: use your registered mark genuinely in Italy within five years, or risk losing it. Since late 2022, the new administrative revocation route before the UIBM provides a faster and more affordable mechanism for challenging dormant marks, complementing the existing judicial route. For trade mark owners, the lesson is to use and document use consistently. For challengers, Italy’s dual-track system now offers an efficient path to clear unused marks from the register and remove obstacles to new registrations.