The Court of Milan (no. 706/2021) has ruled on the issue concerning the distinctiveness requirement of a trademark and on the possibility that its possible original invalidity for excessive vagueness could be remedied by the acquisition of a secondary meaning, as a result of an intense and highly publicized use of the sign (so-called secondary meaning).
A company operating in the cleaning detergents sector at an international level (Alfa) was the owner of a trademark, consisting of the word BIOLINDO, which had been previously registered and used to distinguish some of its products. Alfa sued an Austrian company, Beta for trademark infringement as well as for unfair competition for having used the sign BIOLINDO as a domain name of its website, in order to promote the online sale of cleaning products under a different trademark.
The company Beta appeared in court requesting, by way of counterclaim, that the invalidity and/or revocation of the trademark be declared, due to its generic nature and the wide use of the terms “bio” and “lindo”, which should have led the Court to consider the trademark as an expression of common use and therefore not entitled to any IP protection.
The Court upheld the defendant’s request by declaring the invalidity of the trademark BIOLINDO for lack of distinctiveness, due to the descriptive nature of the sign with respect to the marked products. Furthermore, the Court also excluded that the trademark had acquired its own distinctive capacity over time in view of the use that had been made of it (so-called “secondary meaning”). In this regard, the Court considered insufficient to prove the validation of the sign, the “Google” results of the mark BIOLINDO, the availability of the product on the online website “Amazon”, as well as extracts of advertising catalogues aimed at proving the use of the trademark for years before its registration.
The judgment, characterized by a detailed reconstruction of the discipline in the field of ‘descriptive’ trademarks, is remarkable for its clarity and serves as a warning to those who choose generic signs to identify their products, demonstrating that the sole registration of the trademark is not always sufficient to rely on the exclusivity.
On the descriptive nature of the trademark
The Tribunal declared the invalidity of the trademark BIOLINDO, in relation to the goods in Nice Goods Class 3 (non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.) for lack of distinctiveness pursuant to Article 7.1(b) and (c) of EU Regulation No. 1001/2017 on the European Union trademark (hereinafter “EUTR”).
Article 7.1 (b) excludes the registration of signs devoid of distinctive character; Article 7.1 (c), on the other hand, excludes from the protection granted by registration trademarks consisting exclusively of signs or indications which may serve to designate the kind, quality, intended purpose, value, geographical origin, or the time of manufacture of the goods or of rendering of the service, or other characteristics of the goods or service.
More precisely, the Tribunal firstly recognized the purely descriptive and not distinctive character of the trademark BIOLINDO. Furthermore, it observed that there is a clear overlap between the two grounds for refusal of registration indicated in points (b) and (c) of Article 7 EUTR. In fact, a trademark which merely describes the characteristics of certain goods and services must be considered as such necessarily devoid of distinctive character with reference to such goods and services, being reduced to an “ordinary information message about the kind, quality and characteristics of such goods”.
In its judgment, the Tribunal reviewed the EU case law developed in relation to the application of article 7.1 letter (c) EUTR with reference to descriptive signs.
According to consolidated case law, the exclusion from registration of the signs referred to in letter (c) pursues the general interest by allowing the free use by the community of signs and descriptive indications of goods and services.
For this reason, the requirement is strictly interpreted. First of all, the ground for refusal arises not only when a sign is actually and routinely used to designate, directly or through the mention of one of its characteristics, a product or a service. Instead, it is sufficient that the sign can be used for such purposes. Furthermore, it must be considered irrelevant for the purposes of ascertaining the descriptive nature of the sign that the characteristics of the goods and services described are essential rather than accessory from a commercial point of view, just as it is irrelevant that there are synonyms that can be used to designate the same characteristics.
In the case at stake, it was necessary to evaluate the distinctiveness or, on the contrary, the merely descriptive character of a trademark, consisting of the word “Biolindo” represented in italics and without any particular graphic component.
There are two elements in relation to which the descriptive character of a trademark must be determined: on the one hand, the goods and services for which registration is requested, and in the present case it concerned detergents. On the other hand, the perception of the target public, which the Court identified as average consumers, normally well-informed and reasonably attentive.
On the basis of these two parameters, the Court held that the expression “Biolindo” could only be understood by the public in the following terms: “cleaning product obtained by means of natural processes that respect the life cycle of the environment”. Therefore, given the type of designated product, it follows the descriptive nature of the contested trademark.
In order to reach this conclusion, the Court, referring to the definitions contained in the online Encyclopedia and Vocabulary of the Italian Language “Treccani”, noted in particular that, on the one hand, the suffix “bio” is now generally used as a reference to environmentally sustainable production. On the other hand, the term “lindo” is widely used in the world of household cleaning products as a synonym for clean, thus indicating a cleaning capacity of the product.
With more specific reference to the suffix “bio”, the Court observes that, even if it can be differently perceived depending on the marketed product, in any case it is clear that it refers to the idea of respect for the environment, the use of natural materials or organic manufacturing processes.
Moreover, not even the combination of these two words was considered sufficient to give the sign any distinctive capacity, resulting in fact in a term, Biolindo, not perceived by the average consumer as fanciful, but still as a merely informative expression.
On the “secondary meaning”
Having ascertained the lack of original distinctiveness of the trademark BIOLINDO, the Court then addressed the further argument put forward by Alfa aimed at ascertaining the progressive acquisition of the distinctive character by the disputed sign, according to the possibility recognized by art. 7.3 EUTR. The disposition refers to the so-called “secondary meaning”, an Anglo-Saxon phenomenon by virtue of which, due to the use made of it, a certain word or expression adds to its initial meaning (generic, descriptive or non-original, and as such not protectable) also a second (characterizing) connotation, capable of identifying certain goods or services, thus becoming a real distinctive sign.
In order to better understand the topic through a particularly explicative example, reference can be made to the notorious events of the trademark “Rotoloni”. Indeed, in 2018 the Court of Appeal of Milan – after the Supreme Court’s judgement, which had partly set aside the previous decision – ascertained the secondary meaning of the word “Rotoloni” both used on its own (“it may happen that a descriptive term – in the case at stake “Rotoloni” – as such not protectable, while maintaining its original meaning, takes on over time, due to intense and highly publicized use, another secondary meaning”); and together with the trademark “Regina” (“the secondary meaning can also occur through the use of the term as a component of a complex trademark […] it cannot be excluded that the acquisition of the distinctive character of the trademark “Rotoloni” can derive from its use in combination with the other registered trademark “Regina””). However, the cases seem to be numerous: think of the trademark “Cicciobello” for the famous doll, “Spizzico” for catering services, “Divani&Divani” for the denomination referable to the company Natuzzi.
Indeed, art. 7.3 EUTR establishes an exception to the exclusion of registration of trademarks lacking “innate” distinctiveness (due to their generic nature, mere descriptiveness or lack of originality). Such exception is to be applied when these trademarks have acquired, with reference to the goods or services for which registration is requested, the aforementioned distinctive character as a result of continuous and consolidated use within the relevant market. Art. 13 of the Italian Industrial Property Code mirrors the European disposition, excluding not only the impediment to registration (art. 13, c. 2 IPC), but also the possibility of declaring or considering the sign invalid if the latter has acquired distinctive character before the claim of invalidity by the third party (art. 13, c. 3).
However, neither of the two aforementioned provisions provides a specification of the said notion of “use” capable of making the contested trademark acquire distinctiveness, for example, not clarifying the terms of temporal or geographical extension. On the other hand, it could hardly be otherwise, if we consider that the trademark’s “secondarization” is an effect which is only indirectly dependent on the conduct of its owner, and to be traced rather to a change in the perception by the relevant public. Indeed, as a result of the use made of it, the public begins to distinguish the sign as referable to a certain company to be linked to a specific category of goods and services. Such feature is something different from the character of the notoriety of the sign itself, given the possibility that a trademark is known (because widely diffused on the market) but in any case does not have any secondary meaning.
However, both domestic and European case-law have elaborated a series of parameters through which to infer the abovementioned variation in consumer perception. Using the words of the present judgement: “in order to satisfy this burden of proof, it is necessary to demonstrate the intensity, geographical extension and duration of use, as well as the amount of advertising investments made, the market share held and the percentage of consumers who, thanks to the trademark, identify the product or service“. In any case, these factors must always be considered as a whole, avoiding the possibility that any one of them could be considered decisive in the assessment. Furthermore, it will be possible to use demoscopic surveys and market polls (as happened in the “Rotoloni” case), aimed at ascertaining the receptiveness of a certain number of people to the word or expression in question.
In this case, as proof of the secondary nature of the contested trademark, the plaintiff had offered the results of some searches carried out on Google and Amazon and extracts from some advertising catalogues aimed at proving the use of the trademark BIOLINDO prior to the date of registration. However, the Court of Milan has considered insufficient such evidence, “being required for proving the acquisition of distinctiveness by the sign the (different) evidence of a further meaning of which this was initially devoid”. Therefore, the Court concluded that, on the contrary, it could not be inferred “any automatism between the mere presence of the product on advertising extracts prior to its registration and the acquisition of secondary meaning”.
Photo: Luigi Russolo, Dinamismo di un’automobile, 1913