Using a famous trademark can be expensive: the Italian Supreme Court defends well-known trademarks from dilution and parasitic exploitation

Can a fashion brand be threatened by a line of food products? The Italian Supreme Court’s answer is clear: yes, if this risks diluting its value and unjustifiably exploiting its notoriety.

In the world of industrial property, the protection of distinctive signs is not limited to cases of direct counterfeiting. There are more subtle but equally damaging phenomena, such as trademark dilution and parasitic exploitation—two dynamics that can undermine the strength and uniqueness of a renowned brand.

A recent ruling by the Italian Supreme Court (No. 1180/2025) addressed these issues, declaring the nullity of certain trademarks containing the name “ZARA” registered in the food sector.

The decision confirms a fundamental principle: well-known trademarks enjoy enhanced protection, even outside their specific market sector. The risk is not just confusion between products but also the weakening of the brand’s symbolic value and the unfair advantage that others may derive from it.

The “ZARA” trademark… for food products?

The legal case analyzed in the Italian Supreme Court’s ruling originates from a dispute over the registration of several trademarks containing the term “ZARA” used in the food sector. The well-known fashion brand, holder of a globally recognized trademark, challenged these registrations, arguing that they violated its exclusive rights.

The key issue in the dispute was not the risk of consumer confusion—which is typically the primary parameter for assessing trademark infringement—since no customer would likely believe that the famous clothing brand had launched a line of food products.

However, the fashion brand’s owner highlighted two significant risks:

• trademark dilution: the use of the name “ZARA” in a different sector could weaken the distinctive character of the fashion brand, reducing its exclusivity and perceived value among the public;
• parasitic exploitation: the owners of the new trademarks would gain an unfair advantage from the original brand’s notoriety, benefiting from its prestige and reputation without making the same investments in advertising and brand image.

Indeed, if the term “ZARA” were used in multiple sectors without control, it would lose its exclusive value and its ability to immediately evoke the fashion brand.

Initially, the Genoa Court rejected the fashion brand’s claims, reasoning that there was no risk of confusion between the marks and that the different product categories excluded any direct interference between them.
The Genoa Court of Appeal, however, overturned the lower court’s decision, recognizing that the use of the term “ZARA” in the food sector could compromise the original brand’s identity and exploit its fame without justification. Consequently, it declared the contested trademarks null and prohibited their use, imposing financial penalties for any violations.

The Italian Supreme Court fully upheld the Court of Appeal’s ruling, clarifying that the protection of well-known trademarks is not limited to cases of direct confusion but also extends to shielding against dilution and parasitic exploitation.

What are the rules of the game?

A trademark is not just a distinctive sign but an intangible asset that embodies prestige, history, and recognizability. When a brand reaches a certain level of fame, the law protects it even against uses that could weaken its identity.

The protection of well-known trademarks is enshrined in the Italian Industrial Property Code (Legislative Decree 30/2005 – CPI). Article 12, paragraph 1, letter f) states that a trademark cannot be registered if it is identical or similar to a previously well-known trademark, regardless of the goods or services for which it is intended, if such use can unfairly benefit from the distinctive character or reputation of the earlier mark or cause it harm.

Additionally, Article 20, paragraph 1, letter c) reinforces this protection, allowing the owner of a famous trademark to prohibit third parties from using an identical or similar sign that could exploit or damage its reputation, even if there is no direct risk of confusion.

This legal framework aligns with EU law, particularly Regulation (EU) 2017/1001, which guarantees enhanced protection for well-established brands. The Court of Justice of the European Union (CJEU) has clarified that it is not necessary to prove concrete damage to the famous trademark; the mere possibility of an unfair advantage or harm to its image is sufficient.

In light of these regulations, the Italian Supreme Court examined the risk of trademark dilution, a phenomenon that can compromise the identity and value of an established brand.

Trademark dilution: a threat to brand identity

One of the ruling’s central points is trademark dilution. In this case, the Italian Supreme Court highlighted that using the term “ZARA” to identify food products could weaken the distinctive capacity of the original trademark, which is registered for fashion and retail.

The issue was not confusion but rather the risk that “ZARA” would cease to be synonymous with fashion and instead become a generic name, devoid of uniqueness.
Trademark dilution manifests in two primary forms:

• blurring: when a trademark is used in multiple unrelated contexts, it loses its ability to identify a specific company. The Italian Supreme Court noted that if “ZARA” became associated with both clothing and food products, its distinctiveness would be compromised;
  
• tarnishment: if a well-known trademark is linked to lower-quality products, its reputation may suffer.

Even though no direct damage to the fashion company’s reputation was demonstrated, the mere possibility of uncontrolled use of the trademark in the food sector was deemed sufficient to justify the cancellation of the Italian company’s registrations.

This interpretation is perfectly in line with the CPI’s enhanced protection principle and previous CJEU rulings.

Parasitic exploitation: gaining an unfair advantage from another’s fame

Beyond dilution, the Court also highlighted another issue: parasitic exploitation, also known as freeriding.

In simple terms, this phenomenon occurs when a company uses a famous name to gain notoriety without any legitimate effort. It is sufficient that the new trademark benefits, even indirectly, from the reputation of the pre-existing one.

Imagine a luxury brand like Chanel® suddenly being registered for a detergent brand. Even if the products are different, the symbolic value of the name would be compromised, and the detergent manufacturer would gain an immediate advantage without any commercial effort. The same principle applies to the “ZARA” case.

In this specific case, the Court observed that the use of the word “ZARA” in the food sector had no genuine justification other than to exploit the fashion brand’s fame. There was no historical or territorial connection to justify the use of the name, nor any specific commercial necessity.

The Italian Supreme Court confirmed the principle that a well-known trademark cannot be exploited by third parties without a justified reason, even if the business operates in a completely different sector.

The ruling’s implications: a warning for businesses

The Italian Supreme Court’s decision is particularly significant because it underscores an essential principle of trademark law: the protection of well-known trademarks extends beyond their specific product category. This means that a company owning a famous trademark can oppose new registrations that, even in different industries, risk:

• weakening the brand’s exclusivity (dilution);
• unfairly exploiting its fame without any economic or historical connection (parasitic exploitation)

For businesses, this ruling sets an important precedent: well-known trademark owners are encouraged to monitor the market and take timely action to safeguard their brand’s value and recognition.

Conversely, anyone seeking to register a trademark similar to an already famous one, even in a completely different sector, must carefully assess the risk of legal challenges. A thorough analysis is essential to avoid legal risks and protect one’s investment.

This ruling serves as a warning for those registering trademarks: simply changing the industry is not enough to avoid legal issues. The value of a brand lies not only in the products it sells but also in the public’s perception. Protecting it means safeguarding a strategic asset, and the courts are increasingly committed to ensuring this protection.