Trademark: Does a registered trademark guarantee its novelty?

Does a registered trademark guarantee its novelty?

When registering a mark, for its validity, ex Art.12 of the Industrial Property Code, it must be “new”; or rather, no prior registered trademarks like it must exist. Sometimes the registered trademark becomes void from the beginning, as, even if not known, a prior identical mark already existed.

The registration by the Italian Patents and Trademarks Office is not a guarantee as it releases patents and marks without doing a novelty search, eventually making the requestor liable to do it. We could then assume that, as a consequence to this, whoever has first registered the trademark could prevent its use to any subsequent requestor, but it is not always so. As a matter of fact, art. 48 of the Industrial Property Code provides for the possibility of the “validation” of a subsequent trademark.

In reality the law states that the owner of the prior mark can act against any subsequent identical registration within 5 years from the second registration, or rather within 5 years from knowing about the registered trademark use. But if the subsequent mark has been registered for more than 5 years and has since been used, it has been validated by itself as nobody, during all this time, has made any opposition and cannot do it now any more.

However, even if it is possible for him to keep using it, nobody could prevent the previous owner from using his too, therefore the two trademarks, even if identical, are meant to cohabit, but this represents the exception to the normal regulations on trademarks.