The patronymic trademark
In a previous article (click here to read it), we talked about the importance of the trademark, its main function – that is, identifying and enhancing the products/services of the company, distinguishing them from those of competitors and defending them from counterfeiters – and its distinctive capacity, which is also necessary to understand the difference between a strong and a weak trademark.
Among the various types of trademarks is the patronymic trademark – consisting of the first and last name (or only one of the two) of the owner – which, while possessing strong distinctiveness (in that it has no connection with the goods/services of the enterprise), nevertheless presents the risk of confusability with other names.
The difference between a strong and weak trademark
In fact – let us recall – a trademark is considered “strong” that is characterized by a sign (word, design, letter, numeral, sound, color tone), or a combination of them, conceptually unrelated to the goods or services offered by the enterprise.
These characteristics grant the mark greater protection against those who use similar marks for identical goods or services.
The difference between a strong and a weak mark, therefore, is not relevant to whether or not they can be registered, but rather to the level of intensity of protection accorded to one rather than the other.
The patronymic mark can be considered strong, for the reasons explained below.
Conflict with another patronymic
According to a recent ruling by the Court of Naples, “the patronymic represents the heart of the trademark and gives the sign a distinctive and individualizing character” (Trib. di Napoli, 30.05.2024).
Therefore, a potential conflict may arise not only between a patronymic mark and another mark (e.g., figurative), but also with the name of another entrepreneur, identical to the first, which is used for commercial purposes.
In this case, which of the two is most protected by law?
The difference between the right to the name and the right to the trademark.
In order to answer this question, it is necessary to premise that an individual’s name, according to Articles 6 et seq. of the Civil Code, constitutes a subjective right of personality, immutable and, therefore, the subject of the utmost protection by law, in the civil sphere.
However, the principle of immutability of the name encounters a limitation that alters its nature as a very personal right, if it is used in the commercial sphere, especially as a trademark for the identification and enhancement of the company’s products and/or services.
In particular, according to the Court of Cassation, the patronymic name, when used “in the function of a trademark, to distinguish the products of a given company, acquires its own entity completely independent of the natural person to whom the name belongs.
Therefore, it is possible the formation, on the aforementioned name, of rights of another nature related solely to the company, without thereby impairing the function of the civil name, with the imprescriptible and inalienable rights that are exclusively related to that function and the nature of the civil name itself”.
The prevalence of the patronymic mark in the commercial sphere
Thus, according to the Court, it is necessary to keep the protection of the name provided in the civil sphere (as a personality right), with that provided in the commercial sphere (as a distinctive sign), distinct from each other. There is a strict distinction between the “identifying” role of the civil name and its “distinctive” role when it is used in a business context.
In a specific case, again the Supreme Court, in 2016, affirmed that a distinctive sign consisting of an anagraphic name (in this case, “Love Therapy by Elio Fiorucci”) couldn’t be adopted as a trademark by another person who legitimately beared the name Elio Fiorucci, as the right to the name finds “compression” in the sphere of economic and commercial activity (Cass. civ., sent. n 10826, 25.05.2016).
The following year, the Court reiterated the same principle of law, stating that the use of one’s registry name, which impairs the value of an already registered trademark, contravenes the principles of professional fairness, since it contains the same patronymic. Indeed, doing so would unduly take advantage of its distinctive character or notoriety (Cass. civ., judg. n. 12995, 05/24/2017).
