The Italian Supreme Court reverted earlier this year on two decisions of the lower Courts (the "First Courts") regarding whether a registered generic sign could become a trademark.
The generic sign was the Italian word "Rotoloni" ("big roll") which was used by a leading Italian household product manufacturer (Soffass S.p.A.) to commercialize a type of toilet paper.
The First Courts held that the sign was too generic to become a trademark, even if a public opinion survey showed that 51% of the consumers interviewed by the manufacturer thought that the said toilet paper came only from that specific company.
Nonetheless, the First Courts found that it was impossible for a sign to become a trademark with such a common meaning, even if it may have acquired distinctiveness by way of a secondary meaning.
The Italian Supreme Court held that a generic sign may be considered as a trademark by a secondary meaning, where it has acquired distinctiveness by proving, as in the case in question, that a significant number of consumers perceive the sign as being connected with a specific company.
Such a decision demonstrates the changing approach of the Italian lower Courts (Court of first instance and Court of Appeal) towards the secondary meaning of trademarks.
Going forward we can expect the First Courts to assess in more detail evidence of the distinctiveness acquired by a sign, regardless of whether the sign is related to a registered trademark.