As is well known, European Union and Italian trademark legislation is based on the principle of the so-called “trademark exhaustion”, understood in the sense that, once a product is put on the market in Italy, or in the territory of the European Union or the European Economic Area (EEA) by the trademark owner or with his consent, the owner can no longer oppose the free circulation of such product (see art. 15.1, EU Trademark Reg. – Reg. 2017/1001 and art. 15.1 of the Trademarks Directive – 2015/2436, implemented in Italy in art. 5.1 of the Industrial Property Code – Legislative Decree 10/02/2005, no. 30, hereinafter “IPC”).
This would therefore exclude any action by the trade mark proprietor against third parties reselling the relevant goods, in all cases where the latter have lawfully purchased them from the proprietor himself, or from other resellers within the EEA or the EU.
However, Art. 15.2, Reg. 2017/1001, Art. 15.2 of Directive 2015/2436 and Art. 5.2 IPC, provide that, even after the exhaustion of the right, and by way of exception, the proprietor of the trade mark may legitimately oppose the further commercialization of the goods, in the presence of “legitimate reasons”.
Insofar as it is of interest here, in addition to the hypotheses expressly mentioned by the above-mentioned rules (i.e. the modification or alteration of the goods after they have been put on the market), the damage caused to the reputation of the trade mark, resulting from the manner in which marketing is carried out, and the undue advantage that the free rider takes from the distinctive character or the reputation of the trade mark, are considered ‘legitimate reasons’.
In these respects, the ECJ rulings Copad/Christian Dior (ECJ judgment 23/04/2009, C-59/08) and Christian Dior/Evora (ECJ judgment 04/11/1997, C-337/95) are of particular relevance at EU level.
Italian case-law, in the past, was reluctant to recognize protection against the free rider, considering as a matter of principle that – in the absence of a contractual relationship with the owner of the trade mark – any subject should consider himself free to resell the legitimately purchased goods, except in cases of alteration or modification of the same.
In recent years, however, Italian Courts – starting with the Court of Milan and now also many Courts in various Italian cities (and recently also the Court of Cassation) – have changed their orientation.
Among the many rulings, we can mention: Trib. Milan 3/3/2025; Trib. Turin 24/7/2024, Trib. Naples 14/6/2024, Trib. Rome 3/5/2024, Trib. Catania 5/2/2024, Trib. Milan 8/12/2023, Trib. Turin 17/5/2023, Trib. Milan 17/3/2023, Cass. no. 7378 of 14/3/2023, Trib. Milan 2/1/2023, Trib. Perugia 7/1/2022.
In particular, the exception to the principle of trade mark exhaustion for “legitimate reasons” is applied by Italian Courts if the following conditions are met:
– existence of a selective distribution network containing a legitimate prohibition to sell outside the network (contract to be in conformity with applicable antitrust law);
– marketing of luxury or prestige products, due to the characteristics of the product and/or the way in which it is presented and sold (e.g. technology products, fashion products, cosmetics, jewellery, etc.);
– control and protection of the integrity of the network by the owner;
– knowledge of the existence of this type of network, on the part of the free rider;
– commercialization by the free rider, which causes serious damage to the trade mark proprietor’s reputation.
The last condition is the most important element, which is assessed by the Courts very strictly, based on the factual circumstances and the evidence presented in Court. Typically, the prejudice derives from the manner in which the products are presented and sold by the free rider (on a website or in a “physical” shop), in comparison with the manner in which selective distributors belonging to the network must operate; for example, when the products are offered for sale alongside other products of inferior quality, without adequate presentation, etc.
This topic was addressed – among others – at the last Annual Conference of the International Distribution Institute (IDI), held in Turin, Italy, on 6-7 June 2025.
Silvia Bortolotti, IDI Vice-Chair/Secretary General and Country Expert for Italy
