Secondary meaning and distinctive character in a trademark

The principle of secondary meaning concerns trademarks devoid of distinctive character, acquiring the same through the use and renown. Let’s see in detail.

Article 13, paragraph 1) of the Italian Industrial Property Code provides that signs without distinctive character cannot be registered as a trademark, in particular:

1. Those which consist exclusively of signs that have become commonly used in the current language or in the established practices of the trade (for example words like “standard”, “super”, “deluxe”, “top”).
2. Those which consist exclusively of generic names of products or services or descriptive indications referred to them, such as signs that may be used in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or rendering the service, or other characteristics of the goods or service.

What the secondary meaning is

Nevertheless, article 13, paragraph 2 of the Italian Industrial Property Code provides that, as exception to the prohibition of registration of marks which are devoid of any distinctive character:

“Those signs which, before the filing of the registration application, have acquired the distinctive character due to the actual use thereof, can be registered”

This article covers the case in which the mark has acquired distinctiveness before registration.

Paragraph 3 of the same article, instead, covers the case in which the mark has acquired distinctiveness after registration and provides that it cannot be declared invalid if, in consequence of the use made of it, it has acquired distinctiveness.

Within the European Union, article 7, paragraph 3 of the Council Regulation 2017/1001 admits to registration trademarks which, although originally devoid of distinctive character,

“have become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of them”.

Acquisition of secondary meaning

In these cases it is said obtaining a secondary meaning which occurs when a word (or a design, or a shape or other types of mark), originally devoid of distinctive character, has with time a further meaning in the eyes of consumers and thereby it is able to identify that products come from a specific undertaking.

An example is the brand Divani&Divani which, having lost its descriptive function thanks to the advertising and acquired notoriety, has become able to identify the product as coming from a well-determined company and, therefore, to distinguish this product from those coming from other companies.

The secondary meaning is acquired through the use of the mark; proof of obtaining a secondary meaning can be given in several ways, including opinion polls or statements from qualified operators of the concerned sectors.

The Court of Justice (7.7.2005, C 353/03) stated in this regard that:

“The matters capable of demonstrating that the mark has come to identify the product or service concerned must be assessed globally” and “in the context of that assessment, the following items may be taken into consideration: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations”.

(Previously, the Court had similarly stated in Joined Cases C-108/97 and C-109/97).

The Italian Corte di Cassazione ruled on the principle of secondary meaning also in relation to the weak trademark (judgement 1861 of 2 February 2015).

With regard to the application of the secondary meaning principle, the Court emphasizes that

“This phenomenon, developed for the so-called rehabilitation or validation of the sign originally devoid of distinctive character, since lacking originality or generic or descriptive and that, however, receive the distinctive capacity from the use that is made by the market, has been used to graspe every evolution of distinctive capacity, namely als as a strengthening of the distinctive capacity of the originally weak mark – but not invalid – that subsequently becomes strong through diffusion, propaganda and advertising”.