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LEGAL NOTICE
LL EGAL NOTICE
MANUFACTURER’s and commercial TRADEMARKS: what are the differences?
Affixing one’s own trademark and logos in place of those of the actual manufacturer must be done carefully and in accordance with the law.
Filippo Cafiero
The need for correct and clear identification of the manufacturer has been under discussion from the time of the original Law No. 126/91 to the subsequent Ministerial Decree 101/97, up to the Consumer Code, as amended by Decree-Law No. 76 of 16 July 2020 converted, with amendments, into Law 120 of 11 September 2020. This issue is also governed by other regulatory texts, such as CE marking, Due Diligence and European Regulation 305/2011, which clearly highlights the roles of manufacturer, importer and retailer and, therefore, the reasons why those who are not the true manufacturer can also be considered as such by the law and the market. Affixing one’s own trademark in place of that of the manufacturer inevitably entails the assumption of precise obligations and considerable responsibilities: this operation must be carried out with the appropriate precautions and in compliance with the obligations and formalities of the law. Care and caution must be exercised when affixing trademarks or logos, as well as when simply adding a header. Together with the well-known principles regarding product data sheets and CE marking, it is also necessary to take into account the regulations relating to trademarks and, in particular, to commercial ones, or to the trademarks or identifying logos of the party who acts as a reseller in the supply chain. Although the law authorises the affixing of such marks and thus entitles the retailer to mark the product supplied to customers with its own logo, thereby identifying its own hand in relation to the various references, the Civil Code expressly prohibits the removal of the manufacturer’s mark in order to do so. Consequently, if one does not exercise due care in affixing one’s trademarks, one runs a double risk: a risk related to the principles of qualification as a manufacturer even for those who may not be manufacturers in reality; and a second risk due to the consequences one may face for violating trademark law.
KNOWING THE RULES TO OPERATE OPTIMALLY
By providing for the reseller’s right to add its own trademark to that of the manufacturer, without however suppressing it, this provision aims to ensure that the identification of the difference between the manufacturer and the trader does not disappear. Not only for a subjective diversification but also for a distinction of roles, competencies and responsibilities in relation to that product. Not because of the product itself but because of the relationship that that product implies between the manufacturer, the retailer and the recipient of the product. In fact, the rule particularly concerns references intended for circulation and the identification of the manufacturer in relations with the seller and in subsequent relations between dealers and traders. For this reason, the protection is actually twofold: on the one hand, the familiar one resulting from the registration of the manufacturer’s trademark; on the other, the distinction between the subjects within the production and commercial chains. Double and mutually corresponding, because in connection with and as a function of the registration of the trademark, the law confers quite a few powers and rights on the person for whose benefit the registration itself was made and because in connection with and as a result of the omitted distinction between manufacturer and reseller/ dealer there is a risk of running into serious consequences for having thus undermined and compromised the very rationale of the registration of the manufacturer’s trademark, with the obvious and reciprocal impact of one aspect on the other. But not only that: precisely for this reason, the prohibition of the suppression of the manufacturer’s trademark is implicitly and concretely accompanied by that of alteration of this trademark. If, in fact, the purpose of the provision is to protect the manufacturer in dealings with other traders/dealers, any alte-
LL EGAL NOTICE
ration that does not take the form of the actual removal of the manufacturer’s mark but of an alteration or other operation that, in any event, does not allow for that identification and, above all, that distinction between the various subjective powers, constitutes conduct prohibited by law because it is in clear breach of a precise obligation in commercial relations. Strictly speaking, the principle does not apply if the retailer has carried out work on the product, presenting it as its own finished product and different from that received from the original manufacturer, his supplier. This is the case, for example, in work on behalf of third parties or in subcontracting relationships. Beware, however: in such cases the advantage of not being subject to the discipline under consideration here is not so great, if one is then unable to sustain the stated position of “manufacturer” of the finished product. In other words, if a multi-services company, in completing the work commissioned by the client, works with the product supplied by the manufacturer and presents the same product as his own, he is not (only) removing the identification of the figure of the manufacturer as his supplier, but is assuming the burdens and responsibilities as the manufacturer of the entire product. Therefore, if he is able to support these in relation to the recipient of his product and in any context, including litigation, there is no argument. If he is unable to do so, he should reconsider his actions. The fact that the distinction between the manufacturer and the reseller/ dealer must always be apparent, and all the more so when the latter does not make any changes to the product and does not act as manufacturer, is also permitted by some courts through express mention in sales catalogues or at exhibitions where the products are shown to the public. Thus, if from the whole or the overall context of the relationship that the retailer/dealer establishes with its customer there are signs that the distinction between itself and its manufacturer/supplier is unambiguous, the risks of infringement may be considered mitigated and sufficiently surmountable. If this is not the case, then the risk is indeed considerable.
THE IMPORTANCE OF PRECISE AND CAREFUL REGULATION
All the more reason to reinforce the need for precise and careful regulation of the relationship between the manufacturer and the retailer and any further traders, even when the economic-commercial relationship of supply is accompanied by the authorisation to use the trademark or any other possibility of using a different heading or method of presenting the product. As we know, in some of these relationships there are agreements for the use of trademarks or logos and for the use of technical and commercial documentation relating to one’s own product, but if these agreements are not properly regulated, both in terms of the way in which they are expressed and the formalities involved, the risks for both parties are considerable: for the retailer, because he may be held and called to account by the market as a manufacturer without actually being
one (in view of what has already been said several times on the subject of the product sheet and CE marking); for the manufacturer, because he may be involved in irregularities or failures by his retailer without having been entitled to do so or being at fault. Finally, for all the reasons mentioned above, however much emphasis is placed on the manufacturer’s trademark or logo, it must be borne in mind that, in an economy in which communication and image are of considerable importance, all other signs attributable to the manufacturer and intended to distinguish it or its various products must be understood to be included and treated in the same way as the manufacturer’s trademark or logo. ■
