Log in

CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

Want to receive Class 46 by email?
Click here subscribe for free.

Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
WEDNESDAY, 6 JULY 2016
Battle of the Alfredo's in General Court: what's in an Italian name?

In a true Italian fashion of family sagas over the name Alfredo which gave birth to the "famous" dish of 'fettuccine Alfredo', the EUIPO and the EU Courts ruled on a conflict between the following parties:

 Mr. Mario Mozzetti - EUTM Applicant

Mr. Alfredo di Lelio - Cancellation applicant

Image not found

Image not found

Earlier Italian mark No 550235  (registered since 1991)

 

 

 

THE ORIGINAL ALFREDO 

 -Class 30: "Rice, cereal preparations, namely pasta; bread " ;

- Class 43: 'Food, excluding cafeterias and coffee shop; temporary accommodation '.

-Class 30: 'Pasta and preparations of cereals';

- Class 43: 'Restoration'.

 

According to the legends of pasta, Mr. Di Lelio created in 1914 the original recipe for "fettuccine Alfredo"- uber famous abroad but not  so much to Italians-   to soothe his pregnant wife,  which became one of the most renown dishes of his restaurant. His original restaurant in Rome is named Alfredo alla Scrofa at Via Della Scrofa, and his fame spread worldwide so much to be nicknamed Alfredo the Emperor of Noodles. Alfredo semi retired and sold his restaurant, to Mr. Mario Mozzetti which is still in business to this day. Some years later, Alfredo Di Lelio opened another restaurant nearby named Alfredo II and today dubbed Il Vero Alfredo  ( the "true" or "original" Alfredo).

In 2009, Mr. Mozzetti obtained the two registrations above which were the object of invalidity actions on the basis of the Italian mark L’ORIGINALE ALFREDO filed in 2012.

The Cancellation Division and Board of Appeal upheld the invalidity action. The General Court dismissed the appeal.

Regarding the first plea, the Court confirmed that the request for proof of genuine use of the earlier mark was untimely and should be dismissed. 

Regarding the second plea based on Article 8(1)b) EUTMR, the relevant public is the average Italian given the nature of the the goods and services. It is also undisputed that the goods and services covered by the contested mark and the goods and services covered by the earlier mark are identical or very similar.

Mr. Mozzetti claimed that the distinctive character of "alfredo" is weak since the use of the word common to the conflicting marks, is widespread in the area of products and services in question. First, the term "alfredo" would be related to the "fettuccine", a type of pasta, due to the existence of a dish called "fettuccine alfredo". According to a research conducted on the Google search engine , the use of "fettuccine alfredo" is generalized. Finally, numerous marks containing the term 'alfredo' are registered in countries of the European Union for services in Class 43.

However, the Court held that  the list of Google search results was solely for the phrase "fettuccine alfredo" and not the term "alfredo" alone, so it did not demonstrate that this term has become widespread in the area of products and services or that it will be perceived, without the addition of "fettuccine" as referring to pasta.

 Furthermore, it should be noted, as did the Board of Appeal, that the name "alfredo" is the element of the marks which the consumer will pay the most attention. Indeed, given that the name "alfredo" is placed above and it is written with letters of a size greater than that of the accompanying phrase ( "alla scrofa"), the consumer will grant him more attention. In the earlier mark, the name "alfredo" is also the element that the consumer will pay the most attention, the 'original' term is perceived as a simple adjective to qualify the name.

So, give the identity or the high similarity of the goods /services, that the earlier mark had a normal distinctive character, and  the fact that the term "alfredo" present in both signs, is of a more important distinction as the other elements, there is a risk of likelihood of confusion.

Last but not least, the Board of Appeal correctly found that the coexistence of the marks in a central area of Rome could not be considered because it was not demonstrated for a significant part of Italian territory. In addition, that coexistence was alleged for restaurants and not for food products covered by the marks. Finally, the contract concluded in 1943 by the ancestors of the parties was not relevant, because the risk of confusion must be assessed in light of current factual circumstances and in particular the similarity of brands, products and services in question.

***

The Judgments in original version are cases T‑96/15 here  and T‑97/15 here.

The Alfredo's story here http://www.alfredo-roma.it/history.htm  and Alfredo Alla Sroffa here http://www.alfredoallascrofa.com/

How to visit both Alfredo's in less than 10 minutes here https://goo.gl/maps/hkygHAVc5Kv

Pasta recipe here http://ricette.giallozafferano.it/Fettuccine-Alfredo.html

Posted by: Laetitia Lagarde @ 19.15
Tags: General Court, confusion, alfredo, roma, fettucini, pasta, restaurant,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4395
Reader Comments: 0
Post a Comment


MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


The Class 46 Archive






 

 

 

 

 

 


CONTACT

info@marques.org
+44 (0)116 2747355
+44 (0)116 2747365
POST ADDRESS

Unit Q, Troon Way Business Centre
Humberstone Lane, Leicester
LE4 9HA

EMAIL

Ingrid de Groot
Internal Relations Officer
ingrid.de.groot@marques.org
Alessandra Romeo
External Relations Officer
aromeo@marques.org
James Nurton
Newsletter Editor
editor@marques.org
Robert Harrison
Webmaster
robertharrison@marques.org
BLOGS

Signup for our blogs.
Headlines delivered to your inbox