Trademark distinctiveness in Italy
Under Italian Law, a trademark can be registered only when certain requirements are met: novelty, lawfulness and distinctiveness.
Trademark distinctiveness consists of the ability to distinguish its own goods or services from those of competitors.
In Italy, generic names and common language used to identify a product or service are considered null and void.
Article 13 of the Italian Industrial Property Code provides that trademarks consisting exclusively of generic names or merely descriptive indications of goods or services shall not be registered. Italian law, therefore, simply prohibits those trademarks that make exclusive use of these elements, while trademarks making use of descriptions or generic names, along with other distinctive characters, which render the mark unique, may be registered.
The Italian Supreme Court confirmed this legal principle stating that the distinctive capacity must be proven according to the area covered by the product or service. Therefore, distinctiveness should always be assessed according to its environment.
An exception to the general rule of distinctiveness is the case of secondary meaning. It is the case in which a sign, with no distinctive capacity, has acquired it subsequently thanks to the use that has been made of it over time, earning indeed a secondary meaning that makes the trademark unique.
On the contrary, the trademark may also lose its distinctive capacity subsequently through its “vulgarization”. This happens when the brand has become so popular that it enters the common language, so much so that it loses its distinctive capacity.