This article analyses the functioning of the five-year validation period, the exceptions under Italian and European law, and the recent confirmation by the Court of Justice of the European Union, which reaffirmed the decisive role of bad faith in the registration of similar trademarks.
Index:
- The five-year validation of trademarks under Italian and European law
- The decision of the Court of Justice: a practical example
- Bad faith always prevails
- Conclusions
The five-year validation of trademarks under Italian and European law
Both the italian law (CPI) and the Euorpean Union Regulation (RMUE), respectively in Article 28 and Article 61, provide that a registered trademark, if used in good faith for five consecutive years, can no longer be contested by the owners of earlier marks who were aware of it and tolerated its use, even if the trademarks are similar.
This mechanism, known as the five-year validation rule, is not, however, without exceptions. Trademark owners are not entirely deprived of protection against confusingly similar later trademarks, even after the five-year validation period has passed.
Indeed, both Italian and EU laws establish the absolute nullity (which is not subject to any limitation period) of trademarks registered in bad faith. Bad faith arises when a trademark is filed with the intent to exploit the reputation of another sign or to obstruct its use and protection.
In such cases, the bad faith overrides the five-year validation rule.
The decision of the Court of Justice: a practical example
The Court of Justice of the European Union, in its judgment of 10 July 2025, reaffirmed this principle.
In the case at hand, the owner of an earlier registration became aware of the filing of similar trademarks and formally demanded their withdrawal, threatening to bring actions for nullity within the five-year period. However, the owner later delayed in initiating those proceedings, exceeding the five-year term. A fronte di ciò, la controparte aveva naturalmente cercato di eccepire l’avvenuta convalida e quindi la decadenza dal diritto di agire per l’annullamento dei marchi successivi. Consequently, the opposing party argued that the trademarks had become validated and that the right to seek their cancellation had therefore expired.
The Court, however, clarified that the tolerance period does not apply where the later trademark was filed in bad faith.
Bad faith always prevails
Good faith is always presumed, unless proven otherwise. In this case, the claimant successfully demonstrated that the later trademarks had been filed with the intent to exploit the reputation of its own trademark.
The fact that the warning letter referred to the five-year period for bringing an action, and that such period was subsequently missed, was irrelevant for the Court’s decision. The Court rightly held that the defect of bad faith results in absolute nullity, which is therefore not subject to prescription.
The ruling confirms that bad faith always prevails over tolerance: no inaction or delay on the part of the earlier trademark owner can validate a registration made with abusive intent.
Conclusions
In this specific case, the owner of the earlier trademark was lucky: despite the wording of the warning letter and the delayed legal action, they ultimately obtained the nullity of the later trademark. This favorable outcome was made possible thanks to the Court’s recognition of the bad faith of the later applicant. However, not all cases end so well. For this reason, it is essential to act promptly and strategically, relying on experienced intellectual property professionals capable of accurately assessing each situation and developing the most effective strategy to protect one’s rights, thereby preventing future risks and disputes.