By judgement issued on May 15th 2024, the Court of Rome declared the invalidity of the “Taffo” trademark, marking a turning point in a long family dispute.
The case originates from issues related to the ownership of the trademark, used for decades by the Taffo family, active in the field of funeral services. The trademark, strongly connected to the family name and to its commercial activity, was at the center of conflicts involving many generations of heirs.
The decision, which confirms the invalidity of the trademark pursuant to art. 19 of the Italian Code of Industrial Property, considered that the registration of the trademark by one of the descendants was made in bad faith.
Brief summary of the issues relating to the trademark ownership
The controversy plunges its roots in the 1940’s, when Mr. Gaetano Taffo, the founder of the company “Taffo Gaetano s.n.c.” started to use the “TAFFO” trademark to identify the funeral services provided by its company. During the years, Gaetano’s sons and nephews joined the company and the company grew, and changed its name and began to operate under the denomination “Taffo Gaetano & Figli s.n.c” continuing to use the trademark as distinctive sign. After the death of the founder, the company was inherited by his four sons who managed the activity under a joint venture, involving other family companies, such as Agenzia Funebre Taffo di Taffo G. & C. S.a.s. di Giulia Taffo and Taffo S.r.l.
However, in 2015 the members of the family decided to separate their activities. The transactive agreement concluded on February 11th 2026 regulated the use of the “TAFFO” trademark establishing specific modalities for its commercial exploitation. Despite the deal, without the consent of the other members of the family, one of the heirs registered the trademark in his name causing some disagreements.
Trademark registered in bad faith of the
One of the key elements of the case was the registration in bad faith, institute disciplined by art. 19 of the Italian Code of Industrial Property. Comma 1 of such article established that “whoever uses or is willing to use a trademark to produce or sell goods or to provide alike services can obtain the registration”.
The Italian and European caselaw has clarified many times that the “registration of trademarks in bad faith” occurs when the applicant intends to abuse the rights of intellectual property for purposes contrary to the principles of fairness and good faith. In particular, a trademark cannot be registered to prevent other legitimate owners or users from its use, nor to obtain an undue advantage, particularly if the registration occurs without the consent of all other rightsholders, as in the case under exam.
In the “TAFFO” case, the Court of Rome highlighted that the applicant for the trademark, one of the heirs, did not act in respect of the previous familiar agreements and of the legitimate expectations of the other members of the family. In particular, the registration was considered an attempt of “undue appropriation” of a distinctive sign which, in the years, has become a family symbol, used by many companies referable to the Taffo family.
Conclusion
The decision of the Court of Rome of May 15th 2024 marks an important step for the Italian caselaw on the invalidity of trademarks, highlighting how bad faith can be presumed by different elements, among which the infringement of preexisting agreements.
In the TAFFO case, the Court considered that the heir infringed the principles of good faith and fairness, by attempting to take possession of the distinctive element which belonged to the family.
Such act justified the declaration of invalidity of the trademark pursuant to art. 19 of the Italian Code of Industrial Property, underlining the importance of respecting agreements and the legitimate expectations of the other rightsholders in the family and commercial context.
Carlo Callea