Quite recently the Italian Corte di Cassazione informed us on the difference between the complex trademark and the composite trademark (judgements n. 1275 and 1276, both of January 25, 2016) and it precisely outlined the difference between the two categories of brands, which lies in the distinctiveness of the elements of which they are composed.
Definition of complex trademark
More specifically, according to the Corte di Cassazione:
“The complex trademark consists of a composition of several elements, each of them having distinctive capacity, the examination of which must be carried out by the judge in a fragmented way for each of them, although the distinctive strength comes from the so called “heart of trademark”
Definition of composite trademark
In the composite trademark, the characterizing element is missing and all the elements are not distinctive, while the distinctive value derives, in a more or less accentuated way, only by their combination or, indeed, by the whole”.
(Previous judgments to which the Corte di Cassazione makes reference: Cassazione, section I, December 3, 2010 n. 24620; Corte di Cassazione, section I, January 18, 2013, n.1449).
The concept was affirmed by many judgments of the Italian Commissione dei Ricorsi, including that of 18 August 2016 n.50, which states that:
“As well known, the complex trademark is different from the composite trademark in which there is not a characterizing element (the so-called heart), but several elements all of them lacking distinctiveness, and only their combination can have, as perceived by the market, a more or less pronounced distinctive value. In other words, while in the complex trademark, each single elements, or at least some of them, can be independently protected as a trademark, in the case of the composite trademark the single elements of the mark are not autonomously protected as trademark but only their combination can be protected as a trademark”.
(the same in Commissione dei Ricorsi of February 2, 2016 n.6 and in the decision of Commissione dei Ricorsi of August 12, 2016 n.46).