During the creation of a trademark it is important to be as imaginative as possible, so that the word (or image) constituting the brand is conceptually detached from the distinguished products/service.
In this post we talk about:
If you produce clothing and you want to launch on the market a trademark identifying a young clothing line, you should certainly abandon the intention to use as a trademark only the words of common use which directly identify the product (jeans, t-shirt and so on) or its characteristics (for example, young), because it is forbidden by the law.
Specifically, article 13, 1, b) of Italian Legislative Decree 10 February 2005 n.30 provides that:
“Trademark which are devoid of any distinctive character cannot be registered and particularly those exclusively made of generic name of product or services or of descripting indications referring to them, such as signs that may be serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services”.
Further advices on how to create a trademark
In theory, in order not to incur in the violation of the law, you could evaluate the possibility of using as a trademark the words that, although at the beginning descriptive of the product, are modified in such a way as to give life to new words (for example, by changing the word with the addition of prefixes and suffixes), preferably accompanied by a graphical characterization.
For example, in Italy there exists the registered trademark LASAGNAM (for food products and catering services) and CASA RE (for real estate services), as well as in Europe there are the trademarks DRIPHONE (for waterproof cases for electronic products, including cell phone cases) and SIMYSKIN for cosmetic products.
This expedient is often used in commercial practice because there is the belief (sometimes founded, others much less) that the message conveyed by a brand that directly evokes the product is more effective.
In this regard, in Italy there exists the category of the “weak trademark”, with a merely descriptive and evocative function of the product (or service) to which it is combined.
Weak trademark and strong trademark
The weak trademark is hardly defensible, in the sense that a later trademark, which is similar and only differs from the former trademark for small amendments or additions is usually considered lawful and not in counterfeiting of the weak trademark.
In short, you run the risk of facing greater difficulties in defending your own trademark, if weak, against any imitations.
The Italian High Court (Corte di Cassazione, 2 febbraio 2004 n.3984) stated that:
“The distinction between the two types of trademark, “weak” and “strong”, is important for their protection, in the sense that in case of weak trademark also slight modifications or additions are sufficient to exclude the confusion, while on the contrary in case of strong trademark all the variations and modifications, even if relevant and original, must be considered illegitimate, as they leave subsistent the substantial identity of the “heart” of the brand, that is the expressive ideological nucleus constituting the fundamental idea in which it is summarized and which characterized its strong individualizing attitude”.
Advisable solution, therefore, consists in creating from the beginning a trademark which is potentially strong, which may consist of a new word, fanciful, or in a word of common use but in no way connected to the product/service that the brand distinguished (for example “cloud” to identify a lipstick). The same rule is also applicable in the case of trademarks consisting of images.
If you would like to receive advice or opinion on the brand created by you, you can contact Eva Troiani law firm.