Patronymic Trademarks - The Supreme Court establishes the criteria for the lawfulness of use

With a decision rendered last July , the Supreme Court put an end to a dispute that took place in courts in 2011 and related to the use of the distinctive sign "Salini", which opposed two branches of the Salini family, both active in the construction sector, which for two generations shared the same entrepreneurial history.

The question brought to the attention of the Supreme Court concerned the legitimacy of the use by both parties of the common patronymic in the same economic activity (the construction of buildings), after the foundation by one of the two cousins of his own independent construction company, Salini Locatelli S.p.A., in direct competition with Salini Costruzioni S.p.A., until then the family company.

In its appeal to the Supreme Court, the appellant argued that the rule governing limitations on the use of trademarks (Article 21 of the Italian Intellectual Property Code) - which does not allow the proprietor of a trademark to prohibit third parties from using his name and address in their economic activity - should also apply to all distinctive signs, i.e. all those elements that identify a certain business activity to the public, including the company name.

The Supreme Court ruled that - although it is in principle admittable to include the founder's patronymic in the company name - it is in any event necessary to verify in concrete that the adoption of the patronymic is not likely to cause confusion.

Under Italian company law there is companies have to indicate the surname or the initials of the entrepreneur in the company name (Article 2563 of the Civil Code); in this regard the Court of Cassation pointed out that it is necessary to adopt a stricter judgement on the conformity of the use of the patronymic with the principles of professional correctness, taking into account both the likelihood of confusion between the two signs and the danger of association between them. A judgement of this kind cannot disregard a concrete verification of the competitive relationship between the two companies concerned.

In the present case, the two companies shared the same identifying "heart" of the sign, consisting of the word "Salini", and both were active in the same construction field; in this context, the inclusion of the element "Locatelli" was not sufficient to protect the company founded subsequently from a likelihood of confusion or association with the pre-existing company.

Referring to its well-established case law on this point (see, e.g., Italian Supreme Court, judgment no. 21403 of 14 August 2019), the Supreme Court stressed that, in the conflict between two companies using the same identifying sign, the one that is first enrolled in the register of companies with that sign must prevail. This point brought to the rejection of Salini Locatelli S.p.A.'s appeal, since the Court asceirtained the existence of a concrete likelihood of confusion and association between the two competing companies.

The judges of legitimacy emphasised the pro-competitive value of the rules limiting the exclusive right (potentially perpetual) of the owner on his distinctive signs (trademark and company name, respectively), reaffirming that the right to prohibit third parties from using a similar or confusable signs is severely limited in the event that the third party uses a similar or confusable sign in his economic activity, which, however, consists of his own name and surname.

The Italian law is clear in stating that this limitation must not result in undue exploitation of the reputation of another person's distinctive sign: only those uses of another person's sign which conform to the principles of professional fairness have to be tolerated by the trademark owner. The reference to a usage in conformity with these principles means that, if someone uses another person's distinctive sign - even if it is part of his own name and surname - in such a way as to unduly enhance his own product and in such a way that it constitutes an appropriation of the merits of others, such use must be considered unlawful as not in line with professional fairness.

Therefore, the competitor's personal name can lawfully appear on the goods and be used within the entrepreneur's distinctive signs, but on condition that any parasitic connections is excluded: the use of the patronymic reproducing an earlier distinctive sign is allowed only for the purpose of identifying the entrepreneur and therefore in a descriptive and informative way. Such descriptive use must, however, be excluded where there is a risk of confusion on the market, in light of the function concretely performed by the name in the commercial activity, aming to avoid the public being misled as to the identification of the producer and the origin of the goods.

Supreme Court, sec. I, decision of July 6, 2020, n. 13921

THE TRADEMARK CASE OF "THE PIZZERIA DA MICHELE"

Recently, the specialized IP section of the Court of Naples dealt with the case of the heirs of Michele Condurro, founder of the Pizzeria “Da Michele” and who claimed rights on the homonymous brand.

 Michele Condurro founded the pizzeria that carries his name located in the popular Forcella neighborhood in Naples back in 1870 and over the years his pizza has become so famous that it was also mentioned by Julia Roberts in the movie Eat, Pray love.

 Recently, the heirs of Michele Condurro have been discussing the right to use the "Da Michele" brand that has become the object of contention by a branch of the family that claimed the right to use it for the opening of several branches in Italy and all 'abroad.

 Similar cases have occurred with the pizza maker Gino Sorbillo and is also happening with the brand SaldeRiso, which sees the award-winning confectioner Salvatore de Riso in court against his brother.

 The case started back in 2016 after the registration of the trademark and Internet domains, in for the recognition and exclusive use of the name "Da Michele".

 Finally, the Court ruled that the exclusive right to use the name throughout the country and internationally belongs to the Condurro heirs who manage the original Pizzeria Da Michele based in Forcella and has imposed the removal of signs, domains and trademarks. The ruling has finally recognized that the patronymic has specific individualizing function, which has been strengthened over time by maintaining a high quality standard, giving rise to a famous trademark and the rights to use the brand must be granted to the person who first adopted and used it.

Surprise Decision on Steve Jobs Trademark.

The European Union Intellectual Property Office (EUIPO) has upheld its prior decision to grant the registration of trademark STEVE JOBS, in the name of two Neapolitan brothers, Vincenzo and Giacomo Barbato.

The trademark  was not only for STEVE JOBS, but also for a stylization, and a very particular letter J, that likely reminds consumers of another company’s logotype.

The Neapolitan brothers noticed that Apple had neglected to register its founder’s name as a trademark and, unwilling to let this opportunity go by,  registered the trademark as shown above before the EUIPO (Registration No. 011041861), in International Classes 9, 18, 25, 38 and 42.

After noticing this, Apple Inc. attacked this registration before the EUIPO, arguing that the letter J was a copy of Apple Inc.’s own apple device, with a very similar leaf, and a bite taken off it, as shown here:

After years of arguments, the EUIPO ruled in favor of the Barbato brothers, arguing that letter J is not edible, and consequently there is no relation between the bitten apple of the technological company and the “bitten” J of the Italian brothers.

Consequently, the registration was sustained, and there are now clothes being sold under the STEVE JOBS trademark. The trademark owners have also indicated that they would eventually be interested in selling electronic devices with this trademark and, with the Class 9 protection, this is very likely to happen.

Unfortunately, it is impossible to foresee how a company or market will develop and these situations cannot always be avoided, but it is important to note that comprehensive planning, and to proactively protect through trademark registration those terms important to a company.

Note: Trademark STEVE JOBS was also applied for before the USPTO (Serial No. 79141888), but rejected by said institution.

The Peril of Using your name as a Trademark.

About a year after Thaddeus O’Neil launched a menswear line inspired by the surf culture he grew around on Eastern Long Island, the independent designer received a cease-and-desist letter from a law firm representing Sisco Textiles owner of the famous “O’Neill” sports apparel trademark.

This was the beginning of legal dispute between the surfwear brand founded in 1952, O’Neill, and the independent New York designer who is gaining more and more popularity after winning several fashion contests.

In their dispute with the New York fashion designer, O’Neill argues that the brand has been using its name since the 1950s, and that Thaddeus O’Neil’s marks are “confusingly similar”. According to O’Neill this could of course lead consumers to be deceived and think that the companies are related.

Trademark disputes involving patronymics (i.e. the trademark equivalent to the founder’s name) are quite common in fashion. In 2012, Tod’s — which was operating the Roger Vivier label under a license at the time — took Los Angeles handbag designer Clare Vivier to court for trademark infringement. She eventually settled and re-branded as Clare V. In 2016, Elio Fiorucci lost his case in Italy against the new owners of the brand he founded in the trademark case that involved the use of the “Love Therapy by Elio Fiorucci” trademark.

But what is the position of Italian Courts when use of patronymics could be confusing with other trademarks? In the end of the 80’s the Supreme Court stated that the use of a patronymic as a trademark is a legitimate use of a sign conflicting with a previous registered trademark so long that the previous trademark does not become a famous mark.

This principle has been reaffirmed by the Supreme Court in 2016 in the cited Fiorucci vs. Elio Fiorucci case.

Our tip? Carry out a preliminary trademark search before launching your brand bearing your name.

Blue Ivy

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.