With a judgement rendered on February 2nd, 2015, No. 1861, the Italian Supreme Court of Cassation issued a new ruling regarding the extent of protection of “weak” trademarks based on the doctrine of “secondary meaning”.
In the case at hand, Natuzzi S.p.a., an Italian top tier manufacturer of sofas, armchairs, furniture and home accessories, and holder - since 1991 - of the national and community trademark “Divani&Divani”, had filed an infringement and passing off action against the company Divini&Divani S.r.l. (a competitor in the field of manufacturing of sofas and home furniture) seeking to enjoin the latter from any further use of its company name and the trademark “Divani&Divani”. The District Court had initially upheld Natuzzi’s infringement claim, while the Appellate Court reversed the first instance ruling holding that no likelihood of confusion could be established between the two marks, since the plaintiff’s “Divani&Divani” mark (being the Italian word “Divani” equivalent, in terms of meaning, to the English word “sofas”) had to be considered weak because of an high level of descriptiveness. In such a case, according to the Appellate Court, the mark could only be protected against strictly identical conflicting sign and therefore not against the “Divini&Divani” trademark. Natuzzi further appealed the decision before the Supreme Court, claiming that its trademark, although originally weak, should have been considered eligible for a stronger protection because it had acquired a high level of distinctiveness due to eighteen years of its use “as a trademark” on the market and to the significant marketing, promotional and advertising efforts that had supported such use.
The Supreme Court indeed held that the Court of Appeal erred in considering the “Divani&Divani” mark as a weak trademark since it had omitted to take in due account the “secondary meaning” doctrine that, as established by the jurisprudence of the Supreme Court, provide for originally descriptive marks – i.e. for marks that could theoretically be barred from registration for lack of distinctiveness under Article 13, Sect. 1 of the Italian Industrial Property Code - to have the chance to increase their distinctiveness thanks to their extensive commercial use in a significant number years. In other words, the Supreme Court took the chance to remind, in the case at hand, that the secondary meaning allows a descriptive trademark to achieve protection also against only confusingly similar (and not identical) conflicting signs when its use on the market has proved to be capable to add a different and additional meaning to the plain meaning of the very words at its heart, becoming – to the consumers’ eyes - a means of identification of the company from which the products originate.
The Court of Cassation therefore vacated the second instance decision and sent the case to the Appellate Court for a review this case in light of the principle of law stated above.