In 2016, an eight-year-old Italian student, Matteo Renzi, used the word “petaloso” (which translates to “full of petals”), for the first time, in a written assignment, as an adjective to describe a flower. The word did not exist in the Italian dictionary, but the schoolteacher was so fascinated by this innovative word that he encouraged his student to write to the Accademia della Crusca – the most important research institution for the Italian language – to ask if “petaloso” could become recognised as a new Italian word.
The reply was encouraging: “The word you invented is well-formed and could be used in the Italian language like other Italian words composed in the same way“ (specifically: adjective + suffix “-oso” = meaning “full of”). However, the linguistic experts added that, in order for a new word to become part of the Italian language, it needs to be used and understood by a large number of people.
This is exactly what happened after the teacher published the Accademia della Crusca’s letter of reply on her Facebook page. Her post was rapidly shared more than 80,000 times and on Twitter the hashtag “#petaloso” was used more than 4,000 times. Today “petaloso” is included among the neologisms in the Treccani online Italian dictionary.
Last but not least, recently an Italian politician even said: “This is a petaloso flower”, in order to describe the symbol of her party.
Race to the trade mark
A few weeks after the media response, on 29 February 2016, Matteo’s parents decided to register Petaloso as a national figurative trade mark (IT2016000020803) in order to license it and to use the proceeds to create a charitable organization. To their surprise, they discovered that two earlier applications for the word mark Petaloso had already been filed at the national level (IT2016000020228 and IT2016000020482), as well as another application for a figurative European Union trade mark containing the word petaloso (EM015161359)! As a consequence, Matteo’s trade mark risked invalidation for lack of novelty.
The question is: who has the right to be the holder of a trade mark? The one who invented and/or first used it, or the one who first registered it?
Under Italian law, the general principle is that the registration of a national trade mark grants the holder the exclusive right to use it and to prevent any third party from using it without consent.
Nevertheless, an unregistered trade mark also receives protection under Italian law depending on the degree of its reputation. Unregistered trade marks that are well known in Italy can enjoy the protection provided for under Article 6bis of the Paris Convention, which can also extend to dissimilar goods and services and can be enforced before Italian courts against later registrations.
An unregistered trade mark that is known only locally does not affect the validity of the later registration by a third party, but it can still continue to be used locally in spite of its subsequent registration by a third party.
In the specific case of Petaloso, we cannot qualify it as an unregistered trade mark because there was no prior use of the term as a trade mark. For this reason, there was nothing that could be done with regard to the prior registrations. Luckily, since Matteo’s figurative trade mark was found to have a high degree of distinctiveness, the trade mark proceeded to registration without, thus far, any opposition. We will see what the future holds in this regard.
In this race to become the holder of the Petaloso trade mark, one episode in particular stands out and bears a mention: Style1, an Instagram personality and writer, was the first to register the domain name petaloso.it. He did that in order to protect and withhold it from the “profiteers”, and then he gave it to little Matteo for free. In this case, one might say that the constraints of the law have been put to proper use in the service of preserving good feelings…
Nicoletta Galizia is an Associate at Studio Legale Jacobacci & Associati