Word mark consisting of foreign words: the case Slimmer

As a case of word mark consisting of foreign words, we report the case from which the decision of the Italian Corte di Cassazione originates (n. 2405 of 9 February 2015), which can be summarized as follows:

“the owner of a registered trademark named “SLIMMER”, used to distinguish a food supplement with slimming function, sued a distributor which begun selling a supplement food market with the word “SLIMMEX”.

The case “Slimmer”

In this case, the defendant replied claiming the invalidity of the mark SLIMMER as consisting of a descriptive and vulgarized word. The word “SLIM”, in fact, should be considered highly descriptive of the products’ features (food supplement with slimming function) because further syllables that made up the word were only a comparative, therefore could not be considered a fanciful addition suitable to originally characterize the word.

Both the Court of Milan and the Court of Appeal of Milan accepted the claims of the owner of the mark SLIMMER and recognized the counterfeiting made by “SLIMMEX”.

The judgment of the corte di cassazione in the case Slimmer

In this circumstance the Italian Corte di Cassazione confirmed what already ruled (Cass. N. 1929/1998), namely that “a word commonly used can be a valid trademark provided that it has not an inherently descriptive function of the quality of the product, while it is connected to the product with a combination of pure fantasy that confers original character and individualizing effect to the word”.
However, it has emphasized that the criterion to be followed is rigorous because the commonly used words

“must have had a change as to obscure their original linguistic meaning, and have become such as to designate, with strong identification, a new product, because used in an arbitrary, fantastic, hyperbolic sense, without any conceptual adherence to the object that they have to distinguish”.

The Corte di Cassazione also recalls the EU case law, according to which

“it is not prohibited the registration in a Member State, as national trademark, of a word taken from the language of another member State, if this word is devoid of distinctive character or descriptive of the products and services for which the registration is claimed, unless the relevant people of the member state in which registration is sought is able to identifying the meaning of the term” (Court of Justice, 9 March 2006 , C-421/04).

Thus, in this case the Court of justice considered perfectly valid and effective Spanish trademark consisting of the German word “MATRATZEN” (whose meaning in German language is “mattresses”), registered to distinguish mattresses, cushions and similar products.

In this regard, the Corte di Cassazione states that the judges in previous degrees of judgments did not respond to the objection that the word in question should not be considered descriptive because Italian public has a low knowledge of the English language, thus

“they failed the task of determining whether the expression in the foreign language used in the mark “slimmer” is devoid of distinctive character and is merely descriptive in the Italian territory as it constitutes or has become part of linguistic heritage common in that territory”.

In other words, a word that has a descriptive meaning in a foreign language, cannot be automatically considered descriptive even in Italian, unless it proves that the Italian public is aware of the meaning that the foreign word has in our language.

In light of the above, the Cassazione upheld the appeal of the defendant and ruled that the Court of Appeal of Milan will have to apply the following principle:

“it must be ascertained the degree of dissemination and understanding of the meaning of the word in the territory in which the registration of the mark is required; it must be valued as descriptive the sign having with the product a sufficiently and concrete direct link, as having become part of the common linguistic heritage in the territory and therefore able to retrieve it in a direct and immediate perception of an average consumer who is normally circumspect and informed”.

The case Slimmer help us to understand that we have to take into consideration many factors when we create a trademark.

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