Italy: a Zen approach to distinctiveness

09-05-2016

Valentina Gazzarri

There is an ancient Buddhist saying that goes: “It is better to conquer yourself than to win a thousand battles. Then the victory is yours.”

In one trademark case, George V Eatertainment and George V Records are the owners of the Community trademarks ‘Buddha-Bar’ and ‘Buddha Cafe’. The French companies have been working in the food services field for two decades and made their bar, café and restaurant chain internationally famous thanks to investments in promotional activities. 

Some elements of the plaintiffs’ premises are unusual: a huge Buddha statue, enormous chandeliers, big spaces and a menu by Asian culinary tradition with Californian and European influences. Music of oriental inspiration is broadcast in the premises, and CDs marked with “Buddha Bar” are sold there and online.

The plaintiffs sued Milan-based Buddha Cafè, owner of Siddharta Lounge Buddha Cafè (the trademark and sign of which also include a Buddha image), the annexed disco Buddha Privè and the website www.siddhartacafe.com, on which the sign is displayed including the word element ‘Siddharta Lounge Buddha Cafe’ and an image of Buddha.

The defendant filed a cross-claim of nullity against the trademarks for loss of distinctiveness, which was upheld by the Court of Appeal of Milan and confirmed by the Supreme Court of Cassation in December 2015. 

Supreme Court rules on ‘Buddha’

The Supreme Court firmly maintained that the word ‘Buddha’ included in the plaintiffs’ trademarks does not fulfil the abstract distinctiveness requirement under article 7.(1)(a) of Regulation No. CE 1994/40.

In fact, said the court, they are not able to identify the commercial source or origin of the products or services the marks refer to (ie, CDs, and restaurant and entertainment services), because the word itself describes “a philosophy and a lifestyle that has become common in social behaviour in several ways, such as literature, music, figurative arts, kitchen, etc, so that this word element has become fashionable”.

For the reason above, a consumer who is in front of a premise or a CD marked by the sign “Buddha-Bar” or “Buddha Cafe” is not able to identify its commercial origin as being the George V companies, or distinguish it from premises or products with oriental characteristics offered by other undertakings.

Therefore, the court ruled, the French companies’ trademarks do not even fulfil the concrete distinctiveness requirement under article 7.(1)(b) of the CE 1994/90 regulation.

However, some people may raise objections against the Supreme Court’s judgment by virtue of the relevant case law that distinguishes fanciful, arbitrary or strong trademarks from descriptive, suggestive or weak ones. 

"The Supreme Court firmly maintained that the word ‘Buddha’ included in the plaintiffs’ trademarks does not fulfil the abstract distinctiveness requirement under article 7.(1)(a) of Regulation No. CE 1994/40."

In light of the above-mentioned case law, some may argue that the meaning of the word ‘Buddha’ has no association or relationship with the goods and services protected.

Even if it were considered suggestive, this sign would still be a strong one. In fact, it suggests but does not describe the qualities of the goods or services it refers to. The average consumer is used to linking the word ‘Buddha’ with the founder of Buddhism or the smiling figure of the official iconography, but not usually entertainment or restaurant services.

Therefore, according to this kind of interpretation, the word ‘Buddha’ may be considered distinctive so that it would be easier to prevent a third party from using this mark (even if characterised by slight differences).

Nevertheless, according to the Supreme Court, ‘Buddha’ must be interpreted as referring to the entire Buddhist religion and, above all, feelings that are commonly associated with the religion itself. Consequently, given that the services offered by the plaintiffs are characterised by an oriental style and relaxing atmosphere traditionally associated with Buddhist philosophy, the earlier trademark is to be considered lacking in distinctiveness. 

As a result, there has been an evolution in the interpretation of distinctiveness that goes beyond the most evident meaning of the word element included in a trademark, that emphasises the emotions deriving from it, and that takes into account whether the customisation of the product/service someone offers recalls the emotions at issue.

Valentina Gazzarri is a trademark attorney at Bugnion. She can be contacted at: gazzarri@bugnion.it

Valentina Gazzarri, Bugnion, Supreme Court, Buddha-Bar, Buddha Cafe,

WIPR