After 20 years of litigation between Jägermeister and Zwack Unicum, the Court of Cassation has overturned two precedential decisions of the Court of Rome and the Rome Court of Appeal, arguing that the same trademark can be attacked separately for lack of novelty and non-use, and that devices included in a complex mark may be protected independently. But the saga is not over yet.

Twenty years on
On 14th December 2012 the Court of Cassation rendered an interesting judgment in Jägermeister v Zwack Unicum. The case involved Jägermeister's well-known trademark, 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 an international trademark, extended to Italy under the Madrid Agreement, featuring the figure of a deer with a cross between its horns and the word HUBERTUS. Jägermeister sued Zwack's predecessor in 1993, claiming that the latter’s trademark lacked novelty and should be cancelled, and that its use should be regarded as infringement.

That case was decided in 2001 by the Court of Rome, which stated that the two trademarks were not confusingly similar since consumers would immediately notice the word HUBERTUS, which was obviously not similar to the well-known JÄGERMEISTER mark. 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 analysing their single elements separately. In 2002 Jägermeister appealed, but in 2005 the Rome Court of Appeal confirmed the first instance decision. Jägermeister then filed for recourse to the Court of Cassation.

Separate actions against same trademark for non-use and lack of novelty
In the meantime, Jägermeister had started a separate action against Zwack with respect to the same trademark, claiming that in Italy it had lapsed on account of non-use. Before the Court of Cassation Zwack argued that by doing this, Jägermeister had surrendered its right to proceed with the infringement case, citing a previous decision of the Court of Rome. Zwack argued that only valid trademarks could lapse on account of non-use, and that by filing an action based on non-use, Jägermeister had implicitly recognised the validity of Zwack's trademark. The Court of Cassation disagreed, stating that in order to defend its rights fully a plaintiff should be allowed to file two actions – one for non-use and one for nullity based on lack of novelty – and to keep the two cases separate if it so preferred. This was an important procedural point and will affect 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.

Complex trademarks: device parts may be protected separately
On the substance of the matter, the Court of Cassation disagreed with the first and second instance judges. 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 would be void only for lack of distinctiveness. However, composite marks are valid because the combination of elements which, considered alone, are not individually distinctive becomes distinctive when considered 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 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" means only "distinctive element", and in a complex trademark there may well be two or more hearts since there may be more than one distinctive element.

The Court of Cassation explained that quite often a complex trademark combines a famous word mark with a figurative element. If the doctrine – which the decision regards as erroneous – that there is only one heart in each trademark is followed, the well-known word element will be regarded as the heart and the figurative element will not be protected at all. Looking at the Jägermeister mark, the court instead applied its doctrine of multiple hearts and concluded otherwise. There was little doubt that the word mark JÄGERMEISTER was a strong trademark, and was one of the hearts of the complex mark. However, 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 who converted after 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’s trademark could in fact reinforce the confusion between the figurative parts of the two trademarks, as both refer to the same legend.

The saga goes on
After 20 years, the saga of Jägermeister v Zwack Unicum continues. In fact, the Court of Cassation invited Jägermeister to re-file its case with a different section of the Rome Court of Appeal. However, this court should apply the principles outlined in the Court of Cassation judgment of 14th December 2012, which will certainly influence future Italian cases on the likelihood of confusion between complex trademarks.

Jägermeister was represented by law firm Jacobacci & Associati, of which the author is a member.

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com