THE DE FACTO FORM TRADEMARK: THE FORM MUST BE DISTINCTIVE

The Court of Bologna was called to rule on a dispute between two companies operating in the production and marketing of specialty sweets as the plaintiff company complained of infringement of its de facto trademarks on products, packaging and displays of various types of nougat.

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The defendant challenged the validity of the opposing arguments, asserting not only the diversity of its own products from those of the plaintiff, but also the lack of the ex lege requirements (novelty, distinctiveness, originality) for the recognition of exclusive rights in the head of the other party.

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The court,  by judgment dated 15.6.2023 , rejected the plaintiffs' claims, stating that the genesis of a de facto trademark is not automatically linked to its use, even if protracted and exclusive, but it is necessary that such use has conferred "notoriety" to the trademark, i.e., that the latter is endowed with distinctive capacity capable of making the goods or services of a given enterprise recognizable on the market.

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With specific regard to the "de facto shape" mark, the court pointed out that the three-dimensional shape must have "a sufficient degree of individuality and distinctiveness so as to remind the consumer of its origin and to entail a probability of confusion where imitated by others."

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In the present case, the plaintiff's products and packaging were found to lack individualized elements because numerous other companies make and market products with the same aesthetic characteristics.

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Therefore, the shape of the goods sold by the plaintiff and their packaging do not have the requirements of originality and distinctiveness that allow their protectability and, as a result, the plaintiff cannot claim any exclusive rights over them.

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