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ITALY: LATIN HICCOUGHS
DESCRIPTIVENESS OR DECEPTIVENESS OF A TRADEMARK CONTAINING THE LATIN NAME OF AN ITALIAN CITY (ACCORDING TO THE FLORENCE COURT)
The claimant, Enoteca Hispellum, based in the hilltop city of Spello (considered the jewel of the Umbria region in central Italy) is the owner of a shop opened in 1981 that specializes in wines and regional food products, including olive oil.
In 1996 it filed a trademark for HISPELLUM dal 1981 Enoteca Prodotti tipici (figurative) containing the Latin place name for Spello, HISPELLUM, together with the Italian equivalent of the expression “as of 1981 Wine shop Typical Local Products” and the representation of an olive tree and a grapevine.
The defendant, the agricultural company Azienda Agraria Hispellum, has been producing and selling olive oil in the city of Spello since 1996.
The claimant requested that the defendant be held liable for unfair competition and counterfeiting its prior trademark, on the basis that the defendant’s later company name containing the identical term HISPELLUM would cause confusion for the relevant public. In addition, the claimant requested compensation for damages and that the defendant’s company name be changed.
The defendant requested the rejection of the claim and furthermore argued that the claimant’s mark be declared
1. invalid, since HISPELLUM, being the Latin name for the city of Spello, lacks distinctive character
2. deceptive, since the claimant’s mark containing HISPELLUM is used for products not only originating from Spello but also from other places in Umbria.
The Florence Business Court (IP Section) rejected both Enoteca Hispellum’s and the defendant’s claims.
In the view of the Court, there is no likelihood of confusion between the signs, since the claimant’s mark is a complex mark, wherein the common term HISPELLUM is only one element, and is therefore not the dominant element. Unfortunately, the court decision fails to give satisfying arguments for this conclusion.
Furthermore, the Court held that the claimant’s mark is a complex mark which enjoys, as a whole, the necessary minimum distinctive character.
In addition, according to the Florence Court, since the mark is in use for various products, including olive oil and wine originating from Spello, it cannot be held deceptive.
The Court’s reasoning raises questions and is hard to digest: not only it is difficult to see why HISPELLUM is not the dominant element of the claimant’s mark (the other – both figurative and verbal – elements being descriptive of the products of interest, oil and wine), but also the word HISPELLUM is only recognised by very few consumers as being related to Spello, the current name of the city, so that to the general public it will be perceived as a fancy name, in keeping with the relevant Italian case law.
It is also difficult to understand how, on the one hand, the term HISPELLUM can be considered descriptive, while on the other hand the HISPELLUM dal 1981 Enoteca Prodotti tipici sign can be considered as not deceptive where products not originating from Spello are concerned: there is definitely a contradiction there, which ought to be addressed.Posted by: Edith Van den Eede @ 09.48
Tags: Italy, Court, latin place name, geographical name, deceptiveness, descriptiveness, trade mark ,
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