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A slim chance of having English word marks

01-10-2015

Julia Holden and Antonio Salvidio

On February 9, 2015, the Italian Supreme Court issued a decision in a case involving a word mark in the English language. The mark in question, ‘Slimmix’, was registered by the Italian company Medicinali e Cosmetici (MEC) in respect of dietary supplements having a slimming function.

An earlier word mark for ‘Slimmer’, belonging to Baif International Products New York, had been registered for the same type of goods. Baif had asked the Court of Milan to order an injunction against MEC. The defending party sought, instead, for the sign ‘Slimmer’ to be declared invalid on the basis that it was a common word in the English language, hence lacking distinctiveness and being merely descriptive of the product’s function also in the Italian territory.

Earlier trademark: Baif

slimmer.jpg

Later trademark: MEC

slimmix.jpg

The Court of Milan and later the Court of Appeal of Milan granted an injunction order in favour of Baif.

MEC sought relief from the Supreme Court, arguing that the courts of first and second instance had misapplied the law regarding the necessary distinctiveness required for a trademark to be registered.

The Supreme Court first referred to the principle taken from the Court of Justice in the European Union case of C-421/04. The decision said that registration as a trademark of a term borrowed from the language of another member state in which it is descriptive of the goods for which registration is sought, is not precluded from registration. This is unless the relevant public is capable of identifying the meaning of the term. It suggests that the distinctive character must be assessed in light of the goods for which the trademark is registered and in light of the average consumer of these goods.

"Such a term can still be devoid of distinctiveness and be merely descriptive in the Italian territory if the term has become part of the common language."

At this point the Supreme Court held that, in fact, the Court of Appeal had not correctly assessed the distinctiveness of the term, as it did not take into consideration the slimming function of the goods. This function was brought to mind by the term ‘slim’, although with the addition of the syllable ‘-er’, ie, using it in the ‘comparative’ form. 

According to the Supreme Court, this modification did not transform it into a fanciful term at all, as had been stated by the Court of Appeal, and instead it further stressed the descriptive nature of it in relation to the goods.

The court pointed out that it is a common assumption that Italians have only a limited knowledge of the English language. Consequently, English terms are easily qualified as fanciful. However, such a term can still be devoid of distinctiveness and be merely descriptive in the Italian territory if the term has become part of the common language.

Finally, the Supreme Court granted relief to the appealing party (MEC), annulling the Court of Appeal’s judgment and ordering a new trial before that court. It stated that in order to assess the validity of the trademark based on its distinctiveness, the court needed to ascertain to which degree the meaning of the term is known among the relevant public.

This appears to be just the latest of a series of cases, many at European level, which has found English terms devoid of distinctiveness or descriptive for goods in respect of which they were registered even though they were intended for use in a jurisdiction in which English is still not considered to be well known.

Businesses in countries where English is not a native language will have to think carefully before adopting English names for their products of that genre as, even though English is still not well known in many parts of Europe, this is rapidly changing with the next generation. So the risk of an English-language mark used in an ostensibly non-English language jurisdiction where English is increasingly well known being considered as a descriptive term, and hence invalid, is certainly increasing. Brand owners need to be aware of this and opt for more inventive fictitious words without any decipherable meaning where possible. 

Julia Holden is a partner at Trevisan & Cuonzo. She can be contacted at: jholden@trevisancuonzo.com

Antonio Salvidio is a trainee lawyer at Trevisan & Cuonzo. He can be contacted at: asalvidio@trevisancuonzo.com

Julia Holden, Antonio Salvidio, Trevisan & Cuonzo, word mark, trademark, Baif, MEC,

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