It is said weak trademark the trademark with a little distinctive capacity, while it is strong trademark the remarkably distinctive trademark, because it is made up of fanciful words (or other signs) or it is made up of words that, despite being in common use, are devoid of conceptual link with the products and/or service distinguished by the trademark.
In this post we talk about:
If you want to know more in detail the types of trademarks, we invite you to read Types of trademarks: definition and characteristics.
Let’s analyze some cases concerning weak trademark.
Weak trademark and counterfeiting: the Lovable Mimesis case – judgement 10078
In the judgement number 10078 of May 17 2016 the First section of the Italian Corte di Cassazione reaffirmed a consolidate principle in the Italian case-law, namely that even slight amendments are sufficient to exclude the counterfeiting of an earlier “weak” trademark.
In the matter examined by this judgement the owner of the “Lovable Mimesis” trademark (underwear) sued for counterfeiting the owner of “Mimetic Papillon” trademark, also used for underwear.
The counterfeiting action was rejected by the Court of Appeal of Milan, which considered descriptive the term “mimesis”, because having
“purely evocative valence of the characteristics of the product, consisting of clothes adhering to the skin and invisible under clothing”
In the light of the above the Court of Appeal of Milan considered the trademark
“weak in reference to the included word mimesis, with the consequence that only reproduction is forbidden, while slight amendments are sufficient to exclude the violation”.
The Italian Corte di Cassazione held that the Court of Appeal correctly stated because it considered that “Lovable Mimesis” and “Papillon Mimetic” are complex trademarks
“In which the distinctive character is given by the signs Lovable and Papillon, having nature of strong trademarks, since they are fanciful and they have no link with the product (underwear), whereas, instead, the words mimesis and mimetic are purely descriptive and, as such, they are weak distinctive signs, which can be used by other subjects, on condition that third subjects make amendments, also not particularly relevant”.
The intensity of the protection granted to a brand varies according to its degree of originality and the weak trademark is characterized by the use of words, images or other signs that are close with the product (or service) of reference of the brand.
Weak trademark and possibility of confusion: Judgement n. 28818
The first section of the Italian Corte di Cassazione, by order n. 28818 of 30 November 2017, pronounces again on weak trademark and strong trademark.
Corte di Cassazione has specified that – in the comparison between two weak trademarks – even the presence of a purely descriptive expression as constituent component of one of the two brands can assume a decisive importance in distinguishing the later trademark from the earlier trademark.
In the present case, the later trademark was the combination of two words, which, although both descriptive, formed a combination which was considered as a whole sufficiently different from the earlier and weak trademark, in relation to which the risk of confusion has been excluded.
The Corte di Cassazione states as follows:
“while for the strong trademark all the modifications, although relevant and original, should be considered illegitimate, because in any case they leave unchanged the substantial identity, namely the expressive ideological nucleus of trademark constituting the fundamental idea in which it is summarized, for weak trademark also slight modifications or additions are sufficient to exclude the confusion”.
(Cass. Sez. I, 24/06/2016 n.13170; 25/01/2016 n.1267; 26/06/2007 n.1487)