Preclusion due to coexistence between trademarks: when prolonged use limits the exclusive right

When coexistence is not enough: the limits of the doctrine

One of the most common misunderstandings is to assume that the mere long-standing presence on the market of two similar trademarks is sufficient to neutralize any enforcement action. In reality, coexistence does not coincide with passive tolerance, nor does it amount to an implied waiver of rights.

For example, it is not enough that the owner of the earlier trademark has not immediately brought legal action. Inaction alone does not prove either the absence of confusion or conscious acceptance of the other party’s use. Likewise, use confined to a limited geographical area or to a marginal market segment does not constitute the stable and significant coexistence required to speak of legal coexistence.

Case law requires that the coexistence between the signs be effective and relevant with respect to the full scope of protection of the trademark. If the use of the later sign intensifies only at a later stage, or expands toward the same public and distribution channels as the earlier trademark, the very basis of coexistence may disappear. What matters is the concrete evolution of the market, not mere temporal overlap.

Nor does the inclusion of expressions such as “brand of” or other indications of corporate origin automatically exclude the likelihood of confusion. The assessment does not stop at formal elements: what counts is the public’s actual perception. If the sign continues to evoke an economic link between the undertakings, the distinctive function of the earlier trademark remains compromised.

Ultimately, preclusion due to coexistence is not a tool for ex post regularization of potentially conflicting situations. It is an exception requiring strict proof and cannot be invoked where elements — even indirect ones — of overlap or confusing similarity between the signs emerge.

The “Minotticucine” case: the position of the Venice Court of Appeal

A particularly significant application of the principles concerning preclusion due to coexistence can be found in Judgment no. 826/2024 of the Venice Court of Appeal.

The dispute concerned the use of the trademark “minotticucine,” considered capable of generating confusion with the earlier patronymic trademark “Minotti.” The defense of the owner of the later sign relied, among other arguments, precisely on preclusion due to coexistence: according to this view, the two trademarks had coexisted peacefully on the market for a significant period, thus excluding any likelihood of confusion.

The Court, however, held that the requirements of the doctrine were not met in the specific case.

First, it denied the existence of effective and prolonged coexistence of the sign in the contested form. It is not sufficient that, in the past, the two companies used signs containing the same patronymic: what matters is the specific configuration of the trademark alleged to be confusing. In the case at hand, the sign “minotticucine,” in the form registered in 2009 and subsequently relaunched, had not been used in a stable and continuous manner for a period sufficient to demonstrate consolidated market coexistence. Corporate developments and commercial restructuring over the years had interrupted continuity of use, preventing the establishment of the “peaceful and lasting” coexistence required by case law.

Second, the Court found that the absence of a likelihood of confusion had not been proven. The assessment went beyond a graphic comparison of the signs and took into account the concrete market dynamics: instances of overlap in public perception, customer complaints addressed to the wrong entity, communication strategies, and the commercial positioning of the trademark.

Finally, the Court excluded the good faith of the owner of the later trademark. It observed that the relaunch of the sign had been accompanied by a strategy of expansion and repositioning within the same market segment already occupied by the earlier trademark, in ways that intensified the association between the two brands. In such a context, it could not be maintained that the adoption and use of the sign had occurred in the legitimate belief that no third-party rights were being infringed.

The decision thus confirmed an important principle: preclusion due to coexistence is exceptional and cannot be invoked where coexistence has been discontinuous, recent, or characterized by elements of ambiguity in the public’s perception.

Prevention is better than defense: what companies should do

Preclusion due to coexistence cannot be considered a “safety net” for those who choose to adopt a trademark similar to an existing one. It is a complex exception, subject to strict requirements and particularly careful judicial assessment. Precisely because it affects an exclusive right, it cannot be invoked as an ex post remedy for choices made without adequate prior evaluation.

Effective trademark protection begins before registration. It is essential to conduct a thorough clearance search that does not merely look for identical signs, but assesses the likelihood of confusion in substantive terms: market sector, similarity of goods or services, degree of reputation of pre-existing trademarks, distribution channels, and possible future developments of the business. A superficial assessment may expose the company to complex litigation and significant reputational costs.

Where a situation of coexistence is already in place, it should be managed with legal awareness. In certain cases, it may be advisable to formalize a coexistence agreement, clearly defining product categories, territorial scope, and modalities of use of the sign, thereby reducing uncertainty and preventing future conflicts. The absence of a negotiated framework leaves room for ambiguity that, over time, may evolve into litigation.

From the perspective of the owner of the earlier trademark, it is equally important not to underestimate seemingly marginal uses. Prolonged tolerance, if not monitored and properly documented, may make it more difficult to prove the likelihood of confusion or lack of good faith in future proceedings. Active market monitoring – through surveillance, timely cease-and-desist letters, and a coherent enforcement strategy – remains an essential tool for preserving the distinctive value of the trademark.