{"id":13015,"date":"2026-05-05T09:30:48","date_gmt":"2026-05-05T07:30:48","guid":{"rendered":"https:\/\/blogip.garrigues.com\/?p=13015"},"modified":"2026-05-05T09:36:04","modified_gmt":"2026-05-05T07:36:04","slug":"roncato-when-a-coexistence-agreement-redefines-the-rules-of-a-trademark-conflict","status":"publish","type":"post","link":"https:\/\/blogip.garrigues.com\/en\/intellectual-property\/roncato-when-a-coexistence-agreement-redefines-the-rules-of-a-trademark-conflict","title":{"rendered":"Roncato: When a coexistence agreement redefines the rules of a trademark conflict"},"content":{"rendered":"

The Spanish Supreme Court has brought to an end the trademark dispute between the two branches of the Italian Roncato family, a leading name in the luggage sector. The companies, Valigeria Roncato and Baulificio Italiano, will continue to use the surname \u201cRoncato\u201d in their respective trademarks, in accordance with the coexistence agreement signed in 1996.<\/strong><\/p>\n

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The origins of the business date back to 1957, when Antonio Roncato began marketing suitcases under the \u201cRoncato\u201d brand. After working in their father\u2019s business, his two sons, Giovanni and Carlo, set up on their own in 1973, founding Valigeria Roncato S.p.A., which pursued the same activity. Subsequently, in 1983, the father founded Baulificio Italiano Sorelle Roncato S.r.l., which used both the name \u201cRoncato\u201d and, from 1985 onwards, the letter \u201cR\u201d as distinctive signs.<\/p>\n

Following their father\u2019s death, the two brothers became co-owners of both companies until, in 1996, they decided to divide up the business. The agreement allowed both of them to use the surname \u201cRoncato\u201d on an equal basis, provided that the trademarks that included the term did not give rise to confusion among consumers.<\/p>\n

At present, both companies are the owners of the figurative marks that include this term:<\/p>\n

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All of the marks owned by Valigeria Roncato are registered in class 18 of the Nice Classification (leather articles, suitcases, trunks and travelling bags, etc.). In the case of Baulificio Italiano, although EU trademark 9693094<\/a> covers goods in classes 18 and 20, EU trademark 14241848<\/a> was registered in classes 3, 9 and 35 (perfumery, cosmetics, glasses, retailing and wholesaling), without including suitcases or similar articles among the products it covers.<\/p>\n

The dispute<\/strong><\/p>\n

The dispute arose when Valigeria Roncato became aware that Baulificio Italiano Sorelle Roncato was marketing suitcases in Spanish supermarkets and on the Amazon platform using a sign which, in its view, infringed its trademarks, as the use was neither authorized nor protected by that company\u2019s registered marks. This led Valigeria Roncato to file a claim against Baulificio Italiano Sorelle Roncato.<\/p>\n

Valigeria Roncato\u2019s strategy in the claim was based on several arguments:<\/p>\n