After having registered a trademark for hotel services, I discovered by chance that the name was the same as that of a well-known magazine of a certain province. I would like to know if the owner of the heading of the magazine could bring an action against me.

The problem in this case refers to the relation between a sign registered as a trademark and others registered at a prior date. The law on copyright ex art n. 100, shields the name of a magazine, therefore nobody can use that same name for other editorial products until that name is used and for further two years following its closure. However, the title of a magazine could create problems also to a mark subsequently registered, even if this does not always happen. A risky situation is when a name is amply distributed in such a way to make it famous. From this point of view the name is equivalent to a trademark, therefore able to make void a mark subsequently registered, should this be distributed in such a way to make it well known. In the specific case it does not seem that there is such a situation, both for the fact that the distribution of the magazine is rather limited, referred to a province, and because the name is used very differently. Even in the case where the situation could be evaluated from the unfair competition point of view, the field of hotel services and editorial field are very far apart, unless the magazine is specialized in that particular subject. Apart from some contingent situations to be verified, the risk of a legal action is almost non-existent.