The Court of Rome by decision n. 950/2015 has taken a position in a case where the validity of a trademark constituted by a single alphabetic letter was disputed.
Starwood, manager of the “W Hotels” and owner of a number of “W” trademarks registered in Italy and in Europe in connection with hotel and catering services in class 43 and entertainment services in class 41, sued a company named Whitericevimenti claiming the invalidation for lack of novelty of the Italian complex trademark “W – Whitericevimenti” (below represented), also registered for catering and hotels in class 43. Starwood also demanded the ascertainment of the infringement of its earlier trademarks, as well as unfair competition acts by the defendant.
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The defendant argued that the “W” trademark is devoid of any distinctive character, or in any case “weak”, as it is constituted by a letter of the alphabet that does not have any peculiar graphic characterization.
Thus, in order to evaluate the plaintiff’s invalidity claim, the Court of Rome firstly considered the existence of distinctive character of the national and community “W” trademarks owned by Starwood, starting from the assumption that “the letters of the alphabet, also regardless their graphic characterization, can be registered as trademarks if they enjoy distinctive character”.
According to the Court “the use of the letter “W” […] to distinguish hotel services, in respect of which it does not have any evocative influence […] in consideration of its lack of a semantic connection, presents on the contrary a high distinctive gradient …”.
The Court then acknowledged the full similarity between the “W – Whitericevimenti” trademark and the earlier “W” trademarks of the plaintiff, the similarity between the designated services, and observed a concrete risk of confusion for the public over the origin of the services distinguished with the compared trademarks. To this end, the Court declared the invalidity of the subsequent “W – Whitericevimenti” for lack of novelty.
Consequently the Court of Rome also confirmed that the use of such trademark by the defendant infringed Starwood’s trademarks and sentenced Whitericevimenti to pay damages. The Court, however, ruled out the competitive relationship between the parties, and therefore rejected the claim of unfair competition, based on the fact that the parties operated in different geographical areas.
In point of damage, it is to be noted that the Court sentenced the defendant to repay the profits earned by the defendant and also liquidated on an equitable basis the “moral prejudice” deriving from the dilution of the trademark.