On December 14, 2012, the Italian Court of Cassation rendered an interesting judgment in the case Jägermeister vs. Unicum. The case involved the well-known trademark of Jägermeister used for an herbal liqueur, consisting of the word JÄGERMEISTER and the figure of a deer with a cross between its horns. Zwack Unicum, one of Jägermeister’s main competitors, registered under the Madrid Agreement an international trademark, extended to Italy, featuring the figure of a deer with a cross between its horns and the word HUBERTUS. Jägermeister sued the predecessor of Zwack Unicum in 1993, claiming that the latter’s trademark lacked novelty and should be cancelled, and its use should be regarded as infringement. The long case was decided in 2001 by the Court of Rome, which stated that the two trademarks were not confusingly similar, since the consumers would immediately notice the word HUBERTUS, which is obviously not similar to the well-known word trademark JÄGERMEISTER. In a trademark consisting of a word and a device, the Court argued, if the words are both prominent and different enough, the devices can be quite similar without determining a likelihood of confusion between the two trademarks. Whether the trademarks are in fact confusingly similar, the Court maintained, should be assessed with regard to their overall impact, without analyzing their single elements separately. In 2002, Jägermeister appealed, but in 2005 the Court of Appeal of Rome confirmed the first degree decision. Jägermeister then filed for recourse to the Court of Cassation, which has now been decided.

In the meantime, Jägermeister had started a separate action against Zwack Unicum with respect to the same trademark, claiming that in Italy it had lapsed on account of non-use. Before the Court of Cassation, Zwack Unicum argued that by doing this Jägermeister had in fact surrendered its right to proceed with the case where it claimed infringement, citing a previous decision of the Court of Rome. Zwack Unicum argued that only valid trademarks can lapse on account of non-use, and that by filing an action based on non-use Jägermeister had implicitly recognized the validity of Zwack Unicum’s trademark. The Court of Cassation disagreed, stating that in order to fully defend its rights a plaintiff should be allowed to file two actions, one for non-use and one for nullity of the trademark based on lack of novelty, and to keep the two cases separated if it so prefers. This is indeed an important procedural point, and will have an effect on how trademarks potentially vulnerable to a non-use challenge, which are at the same time regarded as confusingly similar with a previous trademark, will be attacked in Italy in the future.

On the substance of the matter, the opinion of the Court of Cassation disagreed with the judges of first and second instance. It called for a distinction between «composite» and «complex» trademarks. Composite marks are those composed of different elements, which «considered individually, all lack distinctive character». Trademarks consisting of one of these elements only would be void for lack of distinctiveness. The composite marks, however, are valid, because the combination of elements which, considered alone, are not individually distinctive becomes distinctive when considered, precisely, as a combination.

Complex trademarks, the Court of Cassation said, are different. Here the individual elements combined in a single mark would be distinctive enough even if considered alone. Each of these elements «may be protected individually as a trademark», and the complex trademark protects both the combination and the single elements. The Court of Cassation warned against considering, when confronted with a complex trademark, one or another element as the «heart» of the trademark, concluding that only the «heart» element deserves protection. «Heart» only means «distinctive element», and in a complex trademark there may well be two or more «hearts», since the distinctive elements may be more than one.

It happens quite often, the Court of Cassation explained, that a complex trademark combines a quite famous word mark with a figurative element. If one follows the doctrine, which the decision regards as erroneous, that there is only one «heart» in each trademark, then the well-known word element will be regarded as the «heart», and the figurative element will not be protected at all. Looking at the trademark of Jägermeister, the Court of Cassation applied instead its doctrine of the «multiple hearts» and concluded otherwise. There is little doubt that the word mark JÄGERMEISTER is a strong trademark, and is one of the «hearts» of the complex mark. But the deer with a cross between its horns is also a strong trademark, and may be regarded as a second «heart» of the trademark co-existing with the first one. Jägermeister had both proved secondary meaning and filed a scholarly opinion on the concept inspiring the trademark: the legend of Saint Hubertus, a Medieval hunter saint who converted after Jesus Christ appeared to him as a deer with a cross between its antlers. In this sense, the use of the word HUBERTUS in combination with the deer device in Zwack Unicum’s trademark may in fact reinforce the confusion between the figurative parts of the two trademarks. Both refer to the same legend.

After twenty years, the saga of Jägermeister vs. Unicum has not ended yet. In fact, the Court of Cassation invited Jägermeister to re-file its case with a different section of the Court of Appeal of Rome. This Court should however apply the principles outlined in the Court of Cassation judgment of December 14, 2012, which will certainly influence future Italian cases on likelihood of confusion between complex trademarks.

* The firm represented Jägermeister in the case discussed in the article.