The distinctive feature of the trademark and the exploitation of “secondary meaning”

The mark represents one of the main elements of the image of a company and its main function is to identify and enhance the products / services of the same, distinguishing them from those of competitors and defending them from counterfeiters.

It is therefore a valuable resource to be protected and enhanced, through registration at the national and international offices.
In fact, a registered trade mark confers exclusive rights to the undertaking, which allow it to prevent unauthorized use by other competitors.

However, registration is the final step of a preliminary assessment of the actual activities of the distinctive strength of the brand and the economic return compared to investments made.

Therefore, before embarking on the practice of registration, it is appropriate that every company knows the ‘ real distinctive strength of its brand in order to exploit its potential in the market and, conversely, to avoid opposition from competitors.

This requires that the trademark owner know:

1. The difference between strong and weak brand;
2. the notion of secondary meaning ;
3. the mode of acquisition of secondary meaning as part of a brand.

The requirement of distinctiveness

To understand the difference between weak and strong brand you need to explore the concept of distinctive capacity , which is one of the main requirements of the mark.

According to ‘ art. 7 of the Industrial Property Code (CPI), may be registered as a trade mark all graphically represented signs: words (including personal names), designs, letters, numbers, sounds, the shape of goods or of the pack it, combinations or color tones.

Even the shape of the product or its packaging can constitute a valid trade mark, provided that the sign in question:

• has its own independent distinctive capabilities in the eyes of the average consumer, that the simple view of that specific form would immediately create an ideal connection between the product / service is the trade mark is with the manufacturer (think of the brand “Apple”;
• It does not consist exclusively of the shape (art. 9 CPI):
• which results from the nature of the product (as this is devoid of distinctive capacity);
• of the product necessary to obtain a technical result (exclusively protectable by a patent or a utility model);
• which gives a substantial value to the product.

Therefore, pursuant to art. CPI 13, paragraph 1, may not be registered as a trade mark for signs which lack distinctive character , in particular

1. those which consist exclusively of signs which have become customary in the current language or in the established practices of the trade (think of the pen “bic” or “Kleenex”);
2. those constituted exclusively by the generic names of goods or services or of descriptive indications which refer to such as the signs that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the ‘time of production of the product or the service, or other characteristics of goods or services (eg: it is prohibited to use the “sign all risks ” to indicate an insurance policy that covers all risks of liability).

However, the combined provisions of the 3rd and 4th paragraph of the above article, notwithstanding paragraph 1, prescribes that they can be registered as a trade mark also signs that, before the introduction of a claim or for invalidity by a third, they have acquired distinctive character chased the use which has been made (the so-called secondary meaning ).

The brand, therefore, to have distinctive character, it must be perceived by the consuming public as one of ‘tool identifying the commercial origin of the products or services considerat i, thus allowing no possibility of confusion, to distinguish from those of competitors.

1. The difference between strong and weak brand

Without this necessary premise, it is possible to understand what the requirements that determine the strength or weakness of a brand, features drawn from the case law over the years.

A  weak brand  describes the essence or the content of a product or service, or at least it refers to the concept (eg: the word that represents the mark coincides with the generic name of the product or describing its characteristics).

In other words, the brand is a character or an element of the product itself or in any case is embodied in general in the use of common dissemination words that can not be the object of an exclusive right (eg newspaper).

The strong brand conversely, being characterized by a sign (word, design, letter, number, sound, color tone) or a combination of them that are – tend -concettualmente unrelated to the products or services that flag, will have greater protection in against those who use similar marks for identical goods or services.

The difference between a weak and a strong brand, therefore, not relevant for the purposes of the registrability or less the same, but the d ‘level intensity of protection recognized to one rather than al’altro.

In fact, according to the majority case-law, a weak mark is considered valid provided that possesses a sufficient degree of distinctive ability, although limited, such that they can be regularly recorded.

However, from the point of view of the protection given to it by less than similar brands, the courts have held that even slight changes or additions in the later mark are sufficient to rule out its confusion with the previous weak brand (see., Among all, Cass. Civ . sect. I, June 24, 2016, n. 13170).

In other words, in the presence of a weak brand, competing companies, to avoid incurring in the counterfeiting, they can also be made “minor modifications” or “added” with respect to the brand content, provided they are suitable to be perceived with differentiating value by recipients of marked products.

Conversely, the protection of the strong brand is more effective, because it makes unlawful all variations and modifications, even if relevant and original, which however will postpone all ‘ expressive idea that characterizes the mark and shall attributes its individualizing attitude.

2. The concept of secondary meaning

As mentioned in the introduction, however, also initially not distinctive capabilities sign for generality, mere descriptiveness and lack of originality, it can buy over time these skills and become “strong” due to its extensive use on the market and / or the resulting notoriety and amenability to the holder, achieved as a result of propaganda and advertising implemented [1].

Before 1974, for example, the word “newspaper” was associated with any newspaper or magazine on sale at newsstands. Then, after a time “x”, the same began to be compared to “Il Giornale”, the newspaper founded by Indro Montanelli and now owned by Silvio Berlusconi.

The “status”, called ” secondary meaning “, runs alongside the generic sense, but is protected by the under the combined provisions of Articles. 3:04 art. 13 CPI, through a mechanism of ‘validation’ of the sign originally “generic” or “weak”, which recognizes the same the same protection granted to marks “strong”, including the applicability of the rules on infringement (Cass. Civ. sect. I, 10.11.2015, n. 22953).

Such validation is the right of the owner to properly register the trademark, provided that there are two alternative hypotheses:

1. when the sign has acquired, in addition to the generic meaning, even a specific ” distinctive character ” refers to the undertaking, following the use made by the registrant before the application (Art. 13, 3rd co., CPI);
2. if the sign, at the time of submission of the application, missing entirely distinctive, but they acquire at a later date, provided that prior to the date on which a third party has requested a declaration of invalidity of the registration.

3. The mode of acquisition of secondary meaning as part of a brand

The main question at this point of the analysis is to understand how the propaganda and publicity can be implemented to acquire the mark’s distinctive character and what the duration and intensity necessary and sufficient to enable the proprietor to give proof of ‘occurred “rehabilitation” of the same.

According to a widespread case-law, the burden of proof borne by the trade mark proprietor is to demonstrate the changed perception of the sign by the public, through public opinion surveys : opinion polls, market research or other tools can attest to the change of brand meaning.

The EU Court of Justice in this regard, said that “the evidence to show that the mark (it) come to identify the product or service in question, must be assessed globally”, taking into account, among various elements, ” the market share held by the mark, the intensity, geographical extent and duration (… ), the amount invested by the undertaking in promoting it, the proportion of the relevant labeling, because of the mark, the product or service as originating from a particular undertaking, and statements from chambers of commerce or other professional associations “ (C-353/03 of 7.7.2005; previously, he had expressed the same principle in Cases C-108/97 and C-109/97) [2].

The Supreme Court, in line with the principle enunciated by the Court of Justice also stated that the examination of the salient elements, graphics and visual brand must be done ” in a comprehensive and concise way , assuming the evaluation position of  the average consumer  of products to which the mark is sought “, in relation to its previous memory (Cass. n. 6193/2008; complies Cass. Civ., n. 1437/1990 and no. 4405/2006).

Therefore, the evaluation of secondary meaning that a sign has possibly acquired over the years, thanks to a wide and targeted promotional campaign, to be carried out by the holder taking as benchmarks all the factors mentioned in the case law as trusted, to understand the view that the relevant consumer of the product has connected to your brand.

Conclusion the

In the light of the above done, it can be concluded by stating that, in assessing the distinctive character of the mark, the proprietor firm must conduct a preliminary analysis as to the existence of registrability requirements of Italian law and the decisions of the Court EU Justice.

It will be evaluated, therefore, if the sign:

• possesses an autonomous distinctive capabilities to the average consumer;
• not both consisting exclusively of the shape imposed by the very nature of the product (for example, if the mark of a company that produces stationery materials is constituted by a pencil and an eraser or similar products) or similar necessary to obtain a technical result, or which gives a substantial value to the product.

The only exception to this principle, as stated above, is represented by signs that, before the introduction of a claim or a declaration of invalidity by a third party, have acquired a secondary meaning and, therefore, a distinctive character which leads them back company owner in following the use which has been made.

Therefore, even if the mark is identified with a product or with descriptive indications which relate to it, the recording of the same will still be possible, provided that the sign:

1. It has acquired, in addition to the generic meaning, even a specific “distinctive character” refers to the undertaking, following the use made by the registrant before the application;
2. or missing altogether distinctive character at the time of submission of the application, but it acquires at a later date, provided that prior to the date on which a third party has requested a declaration of invalidity of the registration.

To demonstrate the acquired reputation of the sign and the consequent of the same distinctive capacity, the owner company will have the burden to demonstrate the changed perception of the sign by the average European consumer that the product is aimed, through all the elements fit to demonstrate that the mark has come to identify the product or service in question from the object to which the generic name refers (pencil, rubber or other stationery items, such as in the example above): polls opinion, market research or other tools can attest to the change of meaning of the brand.

[1] With regard to the notion of secondary meaning , the Supreme Court explained that “a sign may acquire distinctive character, even after use which has been made, as well as part or in conjunction with another registered trade mark: possession through proof that the groups concerned perceive the product or service designated by that one mark, as originating from a particular undertaking “ (Cass. Civ., 04.19.2016 n. 7738).

In order application of the principle of the secondary meaning in the marks, the Supreme Court also emphasizes that “this phenomenon, elaborated for the purpose of rehabilitation or so-called validation of the sign originally devoid of distinctive capacity, since missing of originality that is generic or descriptive and that, however, ends with the receiving it by the use made of it by the market, has been used to seize every evolution of distinctive capacity, ie also as strengthening of the distinctive character of the mark in weak source – but not zero – that subsequently becomes stronger through dissemination, propaganda and advertising “ (Cass. Civ., 02.02.2015, n. 1861) .

[2] And ‘the recent European Court of Justice decision, confirming the previous ruling of the EU Court, which in 2012 was declared invalid (on appeal Mondelez company) the three-dimensional mark consisting of the shape of the chocolate bar “KitKat 4 fingers “. In the present case the Court of Justice has stated that to admit the registration of an originally non-distinctive sign (the form filing of the chocolate bar was made by Nestle in 2002), it must be shown that the mark has acquired over time abilities distinctive in the United States where originally had none. Since the brand “4 KitKat fingers” was considered to lack distinctiveness across the EU, in this case it was necessary to prove secondary meaningacquired by the sign across the EU (the judgment states that the use of the sign test can be considered valid also in a cross-border market covering more than one state – for example, two states where the same language is used ). However, since the proof of the object to fame it was provided only for n. 10 member states, the ECJ confirmed the decision to reject the registration of the shape of the finger Nestle. 

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