“The so-called “weak” trademarks are such as they are conceptually linked to the product since the imagination that has conceived them has not gone beyond the detection of a feature, or an element of the product, or the utilization of commonly used words that cannot bear to be the object of an exclusive right” (Corte di Cassazione, Civil Section, Ruling no. 01267/2016).
The above has been maintained by the Italian Supreme Court, which has stated that in the field of industrial property trademarks are considered weak if they are not highly distinctive compared to other similar marks, due to the close conceptual link between trademark and marked products.
The weakness of the trademark does not affect its aptitude for registration, but it makes its protection in case of confusion with other similar marks more difficult, since if the trademark is weak, the competitor’s mark will need only minor changes to avoid legal consequences.
In light of the interpretation provided by the Italian Supreme Court, the Court of Bologna has reasserted that the close link between the trademark’s semantic elements and the nature or function of the product to which it relates, make the trademark “weak”, minimizing its distinctive character and therefore reducing its protection.
However, since no codification on this subject exists, the identification of the distinctive character of a trademark must always be conducted concretely by examining each individual case, therefore it is advisable to seek a legal expert’s opinion first.
(Bologna Office – Elisabetta Sgattoni – 0039 (0)512750020)
