A curious legal battle is recently going on between two international music stars and an Californian company for filing of the trademark "Blue Ivy", which happens to be also the name of the Beyonce’s and Jay-z’s five-year-old daughter. The two singers had already tried, at the time of the baby's birth, to register her name as a trademark, but the LA based clothing company had entered an opposition, asserting its rights to the same name, which had been operating for three years before the child was even born. Today, Beyoncé and Jay-z have filed a new request for registration, adding to brand also the rapper's last name, Carter. This time, the brand, available for viewing on the US Patent and Trademark Office database, covers a wealth of product categories from the beauty market to childcare products, as well as DVDs, CDs, handbags, books and even gambling cards or " live music performances ". The registration request was originally filed in January 2016, but was only available for opposition on January 10 this year. In fact, the California based company has again moved to block this second application, claiming that the two famous parents would like to proceed with trademark registration only to prevent someone else from using the name of their child, without being able to provide the actual proof of use on the market. Indeed, contrary to what is provided in the Italian legal system, according to the United States trademark law, an essential requirement for registration of a trademark is the presentation, at the time of application, of a so-called "statement of use", demonstrating the use of the mark on the US market. If the applicant company is new on the US market, the trademark application is temporarily accepted. Within six months, the registration may be confirmed following the commercial “use test” in the United States. The test of use is made possible by the proof of the product’s sale, or with the printing of catalogs, with advertisements, etc. In Italy, however, the use of the trademark is not an essential requirement for its registration, but a condition for maintaining its validity. The legislator, in Article 24 of the IP Code, explicitly regulated the case of the trademark revocation for "non-use" if the holder of a trademark registered in a specific class didn’t use it for 5 years. In both cases, the ratio of this rule is to prevent anyone from make use of a distinctive sign without actually using it, withdrawing it from the market and preventing others from using it.
The Italian Supreme Court Rules on the "Alessi" Brand.
A few days ago, the Supreme Court ruled on the risk of confusion between a famous CTM trade mark (Alessi) with the trademark "Exclusive Giacinto Alessi srl" which correspond to the name of the founder (Mr. Giacinto Alessi).
In the first two degrees, the courts had excluded any risk of confusion between “Alessi” and “Exclusive Giacinto Alessi” judging that the use of the latter was therefore legitimate.
The decision of the Supreme Court was however different according to the principles of limitation of the use of a surname which corresponds to a trademark.
The Supreme Court stated that "once a sign identical to the name of a person was validly registered as a trademark, the person who legitimately carries that name cannot adopt it (as a trademark) in sectors identical or similar to the previous trademark. The right to a name is, therefore, a clearly compressed in the economic and commercial sectors due to the prior registration of the name as a valid trademark.
The Court also argued that "Alessi" is a trademark which has no links with the products / services offered and therefore stronger than the trademark “Exclusive Giacinto Alessi” which contains a descriptive term (the word exclusive).
A not so kind… Kinder
The Italian Trademark Office recently rejected an opposition filed by Ferrero, owner of the world know Kinder trademark against an individual who registered the trademark “Kind Milk” in class 29 (milk and it’s derivatives).
Ferrero immediately filed an opposition in front of the UIBM claiming risk of confusion with several registered trademarks owned by the Italian food company, namely “Kinder”, “Kinder Milkosa” and “Kinder Milk Snack Point” as these trademarks are registered in classes 30 and 29 claiming a likeliness of confusion under art. 12 of the Italian Intellectual Property code (CPI).
According to the trademark office the goods covered by the conflicting signs were considered to be identical solely on the basis of what is specified in their applications for registration in the "milk and milk products" and for goods in Class 30 (pastry, confectionery and ice cream) but an alleged similarities between the signs do not exist and there is no risk of confusion among consumers and that the opposition should be rejected totally.
Consequently, the application for registration of the mark was upheld.