Make a mark on a sofa, Italian style: Divani bests Divini

A couple of weeks ago, the Corte di Cassazione (Italian Supreme Court) gave judgment in a trade mark infringement and unfair competition action, offering a broad construction of the concept of "secondary meaning" under Article 13 of the Italian Industrial Property Code D.Lgs. 30/2005.

This action followed a complaint lodged by the Italian company Natuzzi before the Court of Bari, seeking to stop its competitor Divini & Divani using the Divini & Divani mark and company name for sofas and armchairs, in that they created a likelihood of confusion in the relevant public with Natuzzi’s Divani & Divani national and Community trade marks. Natuzzi also asserted that its marks enjoyed an enhanced distinctiveness following long-standing use in the sofa market.

The Court of Bari upheld the plaintiff’s infringement claim and awarded damages, but rejected the unfair competition claim. The Court of Appeal reversed this decision, accepting the defendant’s argument that there was no likelihood of confusion since Natuzzi's Divani & Divani marks were weak. In assessing the marks’ strength the court relied on two considerations: (i) the marks concerned comprised common words - "divani" (which means "sofas"), whose repetition within the sign together with the presence of the ampersand could not confer originality on the marks -- in which case protection could be afforded only against an identical sign; (ii) a mark’s widespread commercial diffusion and advertisement due to its long-standing presence in the relevant market has no bearing in determining whether a sign is weak or strong.

The Italian Supreme Court gave this dispute a further twist by reversing the Bari Court of Appeal’s conclusions and annulling its decision.

As to the interpretation and application of the concept of "secondary meaning", the Supreme Court cited its settled case-law in rejecting the Court of Appeal’s reasoning on the matter. Natuzzi’s Divani & Divani marks did indeed possess enhanced distinctiveness, given their breadth of use at national and international levels and their long-standing exposure through advertisements -- which is why the trial court considered them well-known marks with a reputation. At the heart of its judgment was the statement that the secondary meaning doctrine applies not only to marks that are deprived of distinctive character, generic or descriptive (and therefore, in principle, null and void) but which are accorded protection on account of distinctiveness acquired through use. The doctrine also applies where a weak mark becomes a strong one on account of the use made of it and the advertising efforts put forward by the right holder.

In the light of all the circumstances of this case, the Supreme Court held that the concept of secondary meaning may thus be used to pursue every nuance in the evolution of a trade mark's distinctive character. The fact that a claimant has a mark with weak distinctive character does not prevent a court awarding protection to it against the use of a third party’s sign which relies on merely token variations but which in effect misappropriates the mark’s dominant and most distinctive elements. If that were not so, trade mark protection would be limited to cases where the signs were identical or where a likelihood of confusion was based on highly distinctive marks, thus excluding the possibility of protecting weak trade marks -- and the Court of Bari had recognised that Natuzzi's marks possessed a minimum of distinctiveness even though they were weak.

The Court added that also common words can serve as trade marks, provided they do not describe the quality of the products or services for which they seek protection but encompass a fanciful combination in relation to them -- though Divani & Divani marks does not appear to be greatly fanciful in connection with sofas. The significance of this ruling is that the Supreme Court stated that the Court of Appeal of Bari only undertook an analytical examination of the competing marks’ components, affirming their identity and similarity, but omitted to carry out the appropriate overall assessment on the likelihood of confusion, taking into accouivnt the fact that the average consumer only rarely has the chance to directly compare the marks. Said the Supreme Court, the Court of Appeal should have determined whether Divini & Divani had wanted to abuse the most distinctive part of Natuzzi’s Divani & Divani marks.

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