Patronymic trademark: the distinctiveness in cases of homonymy

The patronymic trademark is the trademark consisting of the name and surname or only of the surname (es. Alberta Ferretti, Fendi).
If you want to learn more about brand names, we recommend reading “Types of trademark: definitions and characteristics”.

According to the case-law, in the judgement of comparison between two marks, it is attributed more weight to the surname than to the other elements forming the marks. Normally, the word or words of the patronymic constitute the heart of the brand.

Let’s see some specific cases ruled by the Italian Corte di Cassazione.

The Italian “Corte di Cassazione” has repeatedly stated that:

“In the event of a patronymic mark, the adding of some further elements is not sufficient, in itself, to confer the second mark containing the same surname the requisite of novelty-distinguishability. It has been so affirmed the illegitimacy of the same surname as a trademark, even if accompanied by further elements, provided that the subsequent patronymic mark is used in the same class of the earlier patronymic mark”

(Cass.22.04.2003 n.6426, Cass.26.08.2004 n.17004; Cass.29.12.2011 n.29879, Cass.14.03.2014 n.6021; Cass.04.02.2016 n.2191).

This principle, however, should not be considered always and necessarily valid in presence of trademarks made by other elements (verbal of figurative) in addition to the patronymic.

Let’s see why by examining some judgments about it:

Patronymic trademark: the case Coccoli

The first section of the Italian “Corte di Cassazione” (judgment n.22033/2016, published on October 31, 2016) highlights how, even in the presence of patronymic marks, it is necessary to take into consideration all the circumstances of a matter, and concluded that the Court of Appeal of the case in exam did not err in denying the similarity of marks. More specifically, the Court of Appeal denied the counterfeiting of the patronymic trademark “socks Coccoli” (where “coccoli” was the surname of the founder of the eponymous company) by the trademark “Coccoli di Melby” because it considered that

“the heart of the trademark was not identified by the patronymic “Coccoli”, since, in effect, the trademark was composed of two words, “socks” and “Coccoli”, placed in a circle whose center was the head of a Breton dog, and the term “coccoli” was generic…so that the peculiarity of the trademark could be identified with the combination of “socks” and the image of softness and comfort that was recalled by the animal’s design…”.

The “Corte di Cassazione” underlines, therefore, as the Court of Appeal has enhanced the actual peculiarities of the case, considering that

“the difference in the second trademark, namely the word “of Melby”, far from being a secondary element, had a substantial connotative attitude, as highlighted a fanciful and imaginative tract absent in the other mark, suggesting that the “coccoli”, namely children – referring the trademark “Coccoli di Melby” to a clothing line for children-infants – came from or belonged to a fairytale place, or identify themselves with a fabulous character, element, the latter, accentuated by the graphic representation of the word “Melby” in colourful letters on background in bright colors”.

In conclusion, the opinion of the Court of Appeal is that the trademarks could not be considered similar.

Patronymic trademark in the wine field: the case Castella

The first section of the Italian Civil Court of Cassation, with judgment n.2191 issued on February 4, 2016, upheld the judgment of the Court of Appeal of Turin n.544/2010 of April 19 2010, which affirmed the principle – with regard to trademarks in the field of wine – according to which

“the use of a mark distinguished by a surname identical to the surname of an earlier trademark, but accompanied by a different first name and by the depiction of the Langhe’s hills, is not susceptible to integrate counterfeiting of the earlier mark having identical surname but different first name.”

In this case, Ms. Claudia Castella, owner of an Italian trademark “Castella”, filed on May 5, 2003 to distinguish wines, had sued Mr. Renzo Castella for the use of the mark “Renzo Castella”, also used to distinguish wines. The writ of summons was based on the identity of the two surnames and on the fact that, according to well-established case law, the dominant distinctive element of the patronymic trademarks should be found in the surname.

While the Court of Turin accepted the instance proposed by Ms.Castella, the Court of Appeal of Turin rejected it.

The Court of Cassation considered that the Court of Appeal did not disregard the principle that the heart of the patronymic trademarks is in the surname, but at the same time valued the case in a concrete way and has considered groundless the infringement of Ms. Castella’s trademark because Mr. Renzo Castella

“used the surname “Castella” preceded by the first name “Renzo” and accompanied by the depiction – completely absent in the earlier trademark owned by Ms. Castella – of the Langhe hills”.

The Court of Cassation noted that the Court of Appeal stated

“by citing as examples several cases occurred in the same area of Alba, in which you find both party’s productions of wine – that in the specific field of wine is frequent the presence of companies which commercialize the same products, belonging to subjects which have almost the same surname and which use their surname as company name or trademark. So, having – in the specific sector in question – the surname less distinctive value, the addition of the first name to the surname, especially if accompanied by other descriptive elements (such as, in this case, the Langhe hills), is sufficient to exclude the confusion of the distinctive signs of different companies”.

The Court of Cassation held that the Court of Appeal did not incur in the lack of reasoning and, therefore, confirmed the judgment given by the Court of Appeal of Turin.

As you can deduce from the above, the interpretation of the jurisprudence in specific cases can overturn the basic principles. We therefore suggest you to always consult a professional in IP sector who can suggest you possible scenarios for your needs and problems.

Eva Troiani law firm is at your disposal for any kind of advice. Contact us for any information!