Trademark protection and the principle of secondary meaning

brand nameThe brand name, you know, is a visiting card for the company and its products. The brand should be able to create, in the consumer’s mind, that unique link between distinctive sign, producer and product; that is, it should be capable, once pronounced, of evoking the image (so to speak) of a product and that only.

Doctrine and jurisprudence, over time, have marked the distinction between strong and weak trademarks: in general, the more a trademark is descriptive of the product it is intended to distinguish, the weaker it is; the more the trademark is released from the descriptive aspect of the product, the stronger it is.

However, it also happens that a brand that was originally weak can later become strong. The most immediate consequence of this “acquisition of strength” is explained by thearticle 13 of the industrial property code:

“1. Signs devoid of a distinctive character and in particular: a) those which consist exclusively of signs that have become commonly used in the current language or in the constant uses of trade cannot be registered as a trademark; b) those consisting exclusively of generic names of products or services or of descriptive indications that refer to them, such as signs which in trade can serve to designate the species, quality, quantity, destination, value, geographical origin or the time of manufacture of the product or provision of the service or other characteristics of the product or service.

2. By way of derogation from paragraph 1, signs which, prior to the application for registration, following the use made of them, have acquired a distinctive character …. (omissis) may be registered as a trademark.

In other words, those signs which, subsequently and thanks to their use, have acquired the distinctive character necessary for their validity (and registrability) cannot be declared invalid.

It is therefore natural to ask which process bears a brand aborigine non-distinctive to transform into a mark endowed with this capacity, a potentially null mark into a valid mark, a weak mark into a strong mark. Well, the so-called secondary meaning, an institution of Anglo-Saxon origin, introduced in the Italian law on patents for trademarks (Royal decree n. 929 of 1942) in 1992 with article 47bis. Subsequently, with the introduction of the industrial property code into our system (year 2002), the principle was crystallized in theart. 13recalled today.

On the other hand, already for many years before the introduction of the concept of secondary meaning in the legislative provision, the doctrine and the jurisprudence had made it theirs and had gutted this process under many profiles. In many of the rulings, on merit and on legitimacy, the judges had had the opportunity to clarify this process, its boundaries and the elements necessary for its implementation ever better.

To limit ourselves only to the most recent jurisprudence, we wish to recall the famous “Divani&Divani” sentence of February 2015 pronounced by the Cassation in reform of a sentence of the Court of Appeal of Bari, with which the secondary meaning was qualified as the phenomenon elaborated for the purposes of so-called rehabilitation or validation of the sign originally devoid of distinctive capacity, since it lacks originality or generic or descriptive and which, however, ends up receiving it from the use made of it on the market; a principle, sanctioned the Supreme Court, used to capture every evolution of the distinctive capacity, even as a strengthening of the same in an originally weak brand that subsequently becomes strong through diffusion, propaganda and advertising.

On the other hand, only the year before the Court of Bologna, with an order in the complaint of 26 September 2014, had indicated the secondary meaning as the change of meaning, from generic to specific, in the perception of the public, or rehabilitation of the trademark, which allows, over time, a void trademark, as it is generic and devoid of distinctive capacity, to become valid and a weak trademark, endowed with little distinctive capacity, to become strong, through intense use, accreditation and notoriety achieved as a result of propaganda and notoriety. At the same time, he had indicated that the proof of the penetration of the mark among the public must be provided by those who, by appealing to the principle of secondary meaning, want to rely on it to demonstrate the distinctive character of their sign, its validity or force. However, this proof cannot be provided only through the demonstration of the constancy and consistency of the investments in the brand, but it must be proved that the investments have had the desired result with the public and led to effective awareness/recognition of the brand in the market . This penetration can hardly take place in a short time: a little prolonged use can rarely result in effective commercial placements.

In this context, the Supreme Court, in the well-known “Rotoloni Regina” case (Cass. I civil sentence n. 7738 of 19 April 2016) had also clarified that, given the incumbent on the owner of the trademark in favor of which the principle of secondary meaning of the consequent test, the latter must be provided with the possibility of making use of tools such as opinion polls, commercial surveys, etc., which can, by their nature, provide answers of interest for the purposes of the evaluation. This proof may derive from investigations commissioned by the trademark owner, or, if the subject of a dispute, from official public opinion polls, aimed at fulfilling the same task through the work of an expert of the Judge.

In other words, the owner of the trademark must be given the possibility, with documentation produced ex parte if deemed reliable, or with the formation of proof during the trial, to demonstrate his assumption, not excluding, where the product sector of interest lends itself opinion poll surveys.

All this precious wealth of rulings was recently adopted by the Court of Cassation when it found itself facing the dispute between Barilla and La Molisana for the “square spaghetti” trademark which resulted in sentence no. 53 of 4 January 2022. In this dispute, the owner of the trademark claimed the impossibility of declaring its nullity due to paragraph 2) of art. 13 of the CPI, which, as seen above, does not allow the cancellation of the registration of a trademark which, by virtue of its use, has acquired a distinctive capacity sufficient to make it recognizable on the market. The proof of this acquired secondary meaning was hinged, according to the trademark owner, in the constant advertising investments on the sign and in their economic consistency.

In proceeding to examine the appeal with respect to the invoked principle of secondary meaning, the Cassation clearly illustrated how according to the literal sense of the expression (“secondary meaning”, understood both as subsequent and as added) the case occurs every time in which a sign, originally devoid of distinctive capacity due to genericity, mere descriptiveness or lack of originality, subsequently acquires these capacities as a result of the consolidation of its use on the market. In this hypothesis, the legal system incorporates the fact of the subsequent and “secondary” acquisition of “distinctiveness”, through a sign validation mechanism. The outcome of the process in question implies the possibility for the owner of the trademark to subsequently act in infringement.

It clarified, in confirmation of previous rulings to this effect, that the burden of proving the nullity of the industrial property right falls on whoever challenges the right. But once this proof has been provided, the burden of demonstrating its secondaryisation falls on the trade mark proprietor. The burden of proof, however, is not – despite the fact that the aforementioned phenomenon depends on the intense use of the word so much so that it becomes distinctive for the consumer public – the mere existence of advertising investments per se, but, instead, the reputation acquired by the sign following the advertising activity. In short, not the economic data, but what the economic data has been able to build in the consumer’s mind.

An interesting piece on the specific object of advertising investments in the field of secondary meaning had been provided by the EU Court of Justice in the Adidas case, which again passed between several decision-making stages. In that circumstance the Court had had the opportunity to clarify that the economic investment by the owner of the trademark must be on the registered symbol and not on a partly different trademark or on a part of the trademark itself. Similarly, the consumer’s perception of the individualizing character of the trademark (in other words of the univocal relationship between a specific good or service and the trademark that represents it) cannot be referred to a trademark, even partially, different from the registered one. On the other hand, the secondaryization of the trademark is invoked in order to maintain a registration and therefore it seems logical that what must be examined is the trademark as registered, and not any modification in use or an offshoot of it. It follows that the evidence to be provided to the court by the trademark owner must also be centered taking this firm point into account.

But what if a brand is represented by a color? What if a colour, in common use, is used by a producer of a good or service to distinguish his business? Is it abstractly possible for a brand based on color to acquire secondary meaning and therefore strength? Milka’s experience tells us yes. The famous lilac color has been in use since 1965 in an uninterrupted way for the products of the Swiss company and has certainly acquired, over time and the intensity of promotion and commercial diffusion, a high index of distinctive capacity.

The creation of a trademark that already has the characteristics of a strong sign, certainly facilitates the owner in the protection; however, as we have seen, even an initial brand with little distinctive capacity can have a second life thanks to wise use and the right investment.

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Trademark protection and the principle of secondary meaning