In the judgment n.10078 of 17 May 2016, the First Chamber of the Italian Supreme Court (“Corte di Cassazione”) reaffirmed a principle which is certain in Italian case law, namely that even slight changes are sufficient to exclude the counterfeiting of an earlier “weak” trademark.
A trademark is “weak” when it is conceptually linked to the distinguished product.
In this matter the holder of the trademark “Lovable Mimesis” (underwear) acted for infringement the owner of a trademark “Mimetic Papillon”, also used for underwear.
The infringement action was rejected by the Court of Appeal of Milan, who considered descriptive the term “mimesis” because having “merely evocative value of the characteristics of the product, made up of clothes adhering to the skin and invisible under clothes”. For this reason, the Court of Appeal considered the trademark “weak in reference to the word mimesis, with the result that it is prohibited only total reproduction, while slight changes of the term are sufficient to exclude the violation”.
The Supreme Court stated that the Court of Appeal correctly considered that “Lovable Mimesis” and “Papillon Mimetic” are complex marks, “in which the distinctive character is in the words Lovable and Papillon, both having the nature of a strong trademark, as they are of pure fantasy and lack of connection with the product (underwear), when, instead, the words mimesis and mimetic have a purely descriptive nature and, as such, are weak brands, likely to be used by third parties, provided that there are slight differentiations, not particularly relevant”.
The intensity of protection accorded to a trademark will vary in relation to its degree of originality and the weak trademark is characterized by the use of words, pictures or other signs which are coherent with the product (or service) distinguished by the mark.