Corporate Vision April 2017

38 CORPORATE VISION / April 2017 , Lawyer and professional representative before the Italian, community and European authorities, Domenico de Simone devoted himself to intellectual property exclusively since 1972. The firm recently received the Regional Dispute Resolution Award – Italy award for their outstanding work in the field. The PATHFINDER Case - How to Deal with Re-Filed Trademarks On the subject of intellectual property, after excluding on an ideological basis, the assumptions in which (supposing that such cases may actually exist) the trademarks first filed and then refiled are evidently and objectively (based on documents) foreign to the capabilities of use by the applicant. To such respect, then, also consider the inconsistency occurring between trademarks as filed and the owner’s activity profiles as registered with the Chamber of Commerce and/ or are blatantly likely to cause situations of unlawful approach with trademarks which are actually used. According to this decision, it will be necessary to enter the merit of the reasons explicative for non-use, with litigations on market analysis and on the applicants’ investment capacity, up to the right of waiving a project in order to pursue other ones and so on. Moreover, let’s not make, for the time being, any reflections as to the registration of the re-filings in the name of entities who are not the same (as the former applicant), although functionally ‘related’ (to the latter). And then, is this also true in connection with the trademarks filed as labels in accordance with other consanguineous design laws and regulations (see class 32 of community designs). Conceptually speaking, reflections are invited on other kinds of non-used intellectual production such as the design / copyright / projects filed (with the SIAE, in Italy) even if connected with sensitive applications like healthcare, medical software, road safety, tracking of children, military and non-military aviation. I would say that we have to cope with an ‘all-inclusive’ issue as we rarely did in the past, and I would consider it as such, i.e. as a ‘omni sensitive’ issue, to which all experts, under the form of associations, committees, etc. may address their reflections. For the time being, one point is certain: if we argue the re-filing rights from an administrative standpoint and accept the German or Pathfinder approach, then we must be prepared to argue at courts the justifications of non-use (I find more Company: DE SIMONE & PARTNERS INTELLECTUAL PROPERTY ATTORNEYS Name: De Simone Domenico Email: [email protected] Web Address: www.desimonepartners.com Address: Via Vincenzo Bellini 20 00198 Roma - Italy Telephone: + 39 (0)6 853361 1701CV11 “appropriate to call it Pathfinder”). This exercise has never been necessary (as a standard, I mean) because of the refiling solution, but will become the standard by force-majeure. Can you imagine a court cross-examining the managers of a corporation disclosing intimate secrets and decisions to reveal why a trademark has not been used within the due administrative date which incidentally is not the same for all markets, but still is of interest to be used within other years, months or days? Unbelievable And if I have registered in 100 countries and then miss timely use in 30 of them, according to which criteria shall we be allowed to say that for a wordmark this is insufficient to justify? Or shall each country count for itself alone? detached from the entrepreneurs’ sights and market technicalities? Unbelievable And who will be capable to pay for such actions? We should consider that as technical advisor to the Courts it will be necessary to hire managers from no less than primary corporations, subject to cross-check about their conflict of interests, and capable to match the managers acting for the nonuser party. One additional thought, just to come to common sense, is the acknowledgement that if any jurisdiction had ever been willing to avoid refiling, then it would have had absolutely no problem obviously and plainly to add in the local law that refiling is not valid. But, in view of the fact that a lack of compliance with any laws may be caused by circumstances external to the will of the interested party then even in said jurisdiction(s) the laws should have accorded the chance to enforce justifications to save the registration(s).