Protection of registered trademarks vs. local prior use in the restaurant sector
09 Mar 2026
Court of Bologna, 17 December 2025
The Court of Bologna recently ruled on a complex dispute concerning the use of the renowned distinctive sign “Da Michele” within the restaurant industry. The decision offers several points of interest, particularly regarding the delicate balance between the rights of the owner of a registered trademark and those arising from the local prior use of a distinctive sign.
The Court first declared the cancellation for non-use of the plaintiffs’ trademark “L’antica Pizzeria ‘da Michele’ maestri pizzaioli dal 1870” (the owners of the famous pizzeria restaurant based in Napoli). This specific trademark, which was filed in 2002, was cancelled because the plaintiffs failed to prove genuine use of the trademark within the five years following its registration, not even in a modified form that did not alter its distinctive character. It should be noted, however, that the plaintiffs had subsequently filed other “Da Michele” trademarks, which were the ones that were actually used in commerce by the plaintiffs.
At the same time, the ruling declared the invalidity of the registered trademark held by the defendants (owners of a pizzeria restaurant located in Mestre, part of the city of Venice) due to a lack of novelty compared to the plaintiffs’ earlier “Da Michele” registered trademarks.
The Court held that the expression “Da Michele” – placed centrally and prominently -constitutes the individualising core of the sign and is highly distinctive. Consequently, the Court found a high likelihood of confusion for the public, especially given the identity and similarity of the services involved.
The most compelling aspect of the ruling concerns the ascertainment of the defendants’ right of local prior use regarding the distinctive sign “Da Michele.” The defendants had been using the sign as a trade name (“ditta”) and as business sign (“insegna”) for their pizzeria restaurant in Mestre since 2006, thus pre-dating the registration of the plaintiffs’ subsequent “Da Michele” trademarks.
By applying the principle of the unity of distinctive signs (the so-called “principio di unitarietà dei segni distintivi” provided for by art. 22 of the Italian Industrial Property Code), the Court established a regime of “local duopoly”. This allows for the coexistence of the defendants’ prior-used sign and the plaintiffs’ registered trademarks, strictly within the geographical limits of the city of Venice.
Finally, the claims of trademark infringement and unfair competition brought by the plaintiffs were dismissed. According to the Court, the defendants never used their distinctive signs outside of the city of Venice, thereby respecting the territorial limits of their prior use rights.
Edoardo Cesarini
