By an interim order of 22 December 2015, an IP Court Judge in Naples rejected the application of a catering company seeking a preliminary injunction against a competitor using “ham” as a distinctive sign.
The applicant, Change Food, established in 2010 to create a franchise built around the concept of “gourmet burgers”, is the owner of the trademark “HAM HOLY BURGER” and of the corresponding domain name and website.
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Change Food had learnt that a competitor, Ham Srl, established a year later, had started marketing quality meat under the (figurative) trademark “HAM”, filed after the former’s own trademark, and through the website “ham-burger.it”.
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In its application, Change Food argued that Ham Srl had been free-riding on the former’s commercial initiatives, with the aim of diverting for its own benefit the applicant’s efforts and investments; first, by registering the domain name “ham-burger”, then by imitating the applicant’s website concept and original graphic style in its own website and Facebook company page, and finally by filing its trademark application. The trademark and the company name used by the respondent were, according to Change Food, capable of generating confusion with the “HAM HOLY BURGER” trademark, taking into account the affinity of the parties’ commercial activities. In a point of law, Change Food claimed that the conduct of the respondent constituted unfair competition and infringement of its trademark rights.
On this basis, the applicant requested an urgent injunction against the use of the “HAM” sign as a trademark and company name; the taking down of the defendant’s website; the seizure of any of the defendant’s products bearing the sign “ham”; and the publication of the order in the press.
Ham Srl replied that their project was already finalised and running, from both the commercial and communicational point of view, since before the filing of their trademark application, and in particular since 2010 (the year when one of the founders and owners had registered the disputed domain name and started using his own, pre-existing company for the promotion and sale of quality burgers). The respondent traced back to that period the de facto use of the “ham” sign, claiming as a consequence its prior use, alone and in combination with other signs. The respondent also argued that the claimant’s “HAM HOLY BURGER” trademark was descriptive and thus weak and, in any case, that there was no likelihood of confusion between the signs. It finally noted the belatedness of the applicant’s supposedly urgent lawsuit, a year having passed between the sending of a warning notice and the filing of the application.
Change Food replied that the core of its trademark was represented by the word “ham”, while the words “holy burger” were a mere pay-off. Since in this case, the applicant argued, the word “ham” did not indicate a cut of hog meat, according to its literal meaning, but the beef of the Piedmont fassona (a very low-fat cow), there was no conceptual similarity between the meaning of the word and the products and services covered by the trademark, which was therefore a “strong” one.
The Judge upheld the respondent’s defences. Regarding the alleged unfair competition, she found that the two entrepreneurial projects had been launched almost simultaneously, and that the prior registration of the domain name by the respondent was not an act of cybersquatting: more simply, in building the respective businesses, the applicant had given priority to the trademark, and the respondent to the domain name.
On the trademark issues, the Judge found that the request to grant an injunction against the use of the sign “ham” on the basis of the applicant’s registered trademark was groundless. In the Judge’s view, the term “ham” is generally known by the Italian public at large – even the part that is not familiar with the English language – as the first part of the word “hamburger”, a term commonly used in the Italian language to indicate a patty of pressed beef. The term “ham”, in other words, would not so much evoke a cut of hog meat (for those who know English), but rather, hamburgers, for most consumers. Therefore, in a trademark such as “HAM HOLY BURGER”, the very words “holy burger”, which the applicant had described as a simple pay-off, made up in reality the qualifying part (the one that granted the trademark novelty), while the word “ham” as such could not be granted any exclusive protection. Hence, also the absence of a risk of confusion between the signs of the two competitors.
The Judge, on a side note, also expressed doubts about the late start of the proceeding by the applicant, contemplating whether the ongoing dispute was actually a test to size up the respective positions.
In conclusion, the Judge rejected the applicant’s requests, ordering it to pay the costs.
Editor’s note: the ruling discussed here is subject to appeal, and, having a summary nature, could be overthrown in ordinary proceedings on the merits.