The Protection of ‘Weak’ Trademarks Having Acquired Secondary Meaning

On February 2, 2015, (judgment no. 1861) the Italian Supreme Court ruled on a case involving two Italian companies active in the sector of furniture: Natuzzi S.p.A., owner of the Italian and European trademark ‘Divani & Divani’ (Trademark 1), and Divini & Divani S.r.l. (Divini & Divani), which started to use the trademark ‘Divini & Divani’ (Trademark 2).

Natuzzi claimed that the use of Trademark 2 was illegitimate, constituted an act of unfair competition as well as trademark infringement claiming the use generated confusion amongst customers. In particular, Natuzzi stated that, even if Trademark 1 was composed by two common words (literally in English ‘Sofas & Sofas’), it acquired specific distinctiveness. Consequently, Natuzzi sought to prevent Divini & Divani from using Trademark 2 as a company name and a trademark for its products. Divini & Divani counterclaimed that Natuzzi’s requests were groundless because there could not be any confusion between the trademarks and, in any case, Trademark 1 was weak and consequently, not worthy of protection.

In its decision, the Italian Supreme Court clarified the principles applicable to the so called ‘weak trademarks’ (i.e. trademarks without distinctive features, such as trademarks composed by words of common use describing the product’s qualities and characteristics), as well as the legitimacy of their protection under the ‘secondary meaning’ principle.

The Italian Supreme Court stated the following:

• In case of an infringement, trademarks can be protected even if they are weak trademarks. Consequently, even if Trademark 1 was considered as a weak trademark, its infringement could be established and prosecuted. For this purpose, it is not necessary to prove that Trademark 1 has been reproduced in its entirety. Indeed the partial imitation of Trademark 1, consisting in the reproduction of an essential part of the same, is able to cause confusion between the trademarks. Specifically the Court stated that minimal differences do not impact on the distinctive core of a trademark: the only difference between Trademark 1 and Trademark 2 consists indeed in a vocal (e. Divini & Divani vs. Divani & Divani).
• In order to evaluate the likelihood of confusion between the trademarks, it is necessary to consider the opinion of the average consumer and the intention of Divini & Divani in copying and imitating the distinctive message of Trademark 1 in order to illegitimately attract competitors’ potential customers.
• It is necessary to verify whether Trademark 1 acquired distinctiveness during Natuzzi’s 18 years of activity in the furniture market through its use, diffusion process, and advertising campaigns. In this way, the originally weak trademark would be fully protected under IP laws and regulations based on the principle of ‘secondary meaning’.

On the basis of the above, the Italian Supreme Court remanded the final decision to the previous Court in order to have the above principles applied.