9 May 2016Jurisdiction reportsValentina Gazzarri

Italy: a Zen approach to distinctiveness

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.

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