The first section of the Italian Court of Cassation, by order n. 28818 of 30 November 2017, rules once again on a distinction which is often examined by the Italian case law, namely the difference between Weak trademark and strong trademark.
It is said “weak” the trademark with a low distinctive capacity, while it is said “strong” its opposite, namely the very distinctive trademark, usually because made up of fancy words (or other signs) or words that, despite being of common use, have not a conceptual link with the product and/or the service distinguished by the trademark.
In Italian case law it is a consolidated principle that “while for the strong trademark all modifications, even if relevant and original, but which leave unchanged the substantial identity or the expressive ideological nucleus constituting the fundamental idea on which the trademark is base are not allowed, for the weak trademark also slight modifications or additions are sufficient to exclude the confusion”. (Cass., Section I, 06/24/2016 n. 13170; 25/01/2016 n. 1267; 26/06/2007 n. 14787)
In this matter, the Court of Cassation has had the opportunity to specify that – in the comparison between two weak trademarks – even the presence of a purely descriptive expression as a constituent component of one of the two brands can have a decisive importance in distinguishing the later mark from the earlier mark.
In the present case, the later mark was composed of the combination of two terms, which, although both descriptive, gave rise to a combination which was considered as a whole sufficiently different from the earlier mark, a weak mark, in relation to which the danger of confusion has been excluded.