Italian Supreme Court on Secondary Meaning: When a Registered Generic Sign can Become a Trademark

On 19 April 2016, the Italian Supreme Court passed on secondary meaning, overruling two sets of proceedings of the courts of merits which declared the invalidity of a trademark.

The case arose some debate among professionals since the trademark declared invalid was registered by a very well-known bathroom tissue producer which invested substantial efforts for decades to ensure that its registered generic sign (“Rotoloni” which literally means big toilet roll) had acquired distinctiveness by way of secondary meaning.

As a result of its efforts, the defendant offered a public opinion survey evidencing that 51% of interviewed consumers were recognizing the generic sign at issue as distinctive of products coming from a specific company.

However, the Tribunal of first instance and the Court of Appeal of Milan declared the trademark invalid, considering that:

  • a generic sign would not become distinctive when it preserves, in addition to secondary meaning, a generic and common meaning
  • a generic sign would not become distinctive if it is part of a registered trademark
  • the public opinion survey provided by the defendant had been considered irrelevant to the extent of meeting the burden of proof on secondary meaning.

The Italian Supreme Court has completely overruled the conclusions of the courts of merits, following remarkable decisions on secondary meaning of the European Court of Justice (among others, C-215/14).

As a consequence, the high court stated that a generic sign can acquire distinctiveness due to its large use as a trademark among the public even before its registration, regardless if it is part or it is used in combination with another registered sign. Moreover, the high court specified that such acquisition of distinctiveness by secondary meaning can be proved by a public opinion survey evidencing that consumers perceive the product sold under a sign coming from a specific company.

By: Alessandra Feller and Alessia Castelli

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