Deceptive Trademark

We talk about deceptive trademark when the mark is able to deceive the public on the geographic origin, quality or nature of the products. Let’s see how the Courts examine these cases.

Deceptive trademark in the italian law

Article 14, paragraph 1, b) of the italian Industrial Property Code provides that:

“The following shall not be registered as trademarks: signs which are such as to deceive the public, in particular as to the geographical origin, nature, quality of products or services”.

In the event a deceptive trademark application overcome the exam carried on by the Italian Patent and Trademark office and become a registered trademark, it will be possible that it is declared invalid by a Court at the request of anyone interested in obtaining the invalidity of the mark.

Deceptive trademark in the eu law

With regard to the EU territory, article 7, paragraph 1, g) of the EUTM Regulation n. 2017/1001 provides that:

“the following shall not be registered: trademarks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service”.

It is an absolute ground for refusal, which must be examined by the EUIPO after the trademark application filing. In the event the trademark is granted, it will be declared invalid at the request by any person interested in it. There exists deception also if the EU trademark is deceptive in one language or in one part of the European Union.

Examples of deceptive trademarks

The most common cases of deceptive trademark are related to a false indication of its geographical origin, if such indication is relevant for the consumers; we can mention, by way of example, to a French city as a trademark of a perfume or to a Swiss city as a trademark of a clock.
However, in case geographic origin has no relevance for the consumers, it is possible to use the same as a trademark (or part of a trademark) as it is considered fanciful element (for example Mont Blanc pens or Capri cigarettes).
The other hypothesis of deceptive trademark concern the nature or quality of products or services.

The case Cotonelle

In this regard, one of the most famous Italian judgement is the case “Cotonelle”. The brand “Cotonelle” was registered exclusively for paper products (free of any cotton fiber) and was considered invalid (see Italian Corte di Cassazione n. 3276 of 9 April 1996) as evocative of the presence of cotton and, as such, deceptive for the consumers.

When deceptivity comes in a second time

There is an hypothesis of supervening deceptiveness, governed by article 14, paragraph 2, letter a) of the Italian Industrial Property Code, according to which:

“A trademark is revoked if, due to the way and to the context within which it is used by its holder or with his consent in respect of products or services for which it is registered, it has become such as to deceive the public, in particular as to the nature, quality or geographical origin of product or services”.

In this event the trademark is valid at the beginning and the deceptiveness occurs after the registration (for example two or more owners of a trademark (co-ownership of a trademark) decide to sell products which are different by a qualitative point of view).

With regard to the EU territory, article 58, paragraph 1, c) of the Council Regulation 2017/1001 provides that:

“the rights of the proprietor of the EU trademark shall be declared to be revoked on application to the office or on the basis of a counterclaim in infringement proceedings if, in consequence of the use made of it by the proprietor of the trademark or with his consent in respect of the goods or services for which it is registered, the trademark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services”.

If you need more information on deceptive trademark, contact Eva Troiani law firm.