The requirement of distinctiveness of trade marks the Mare Aperto case

02 April 2013

Linda Brugioni

The Specialised Division in Business Affairs of the Court of Bari[1] has recently issued an interesting decision[2]  bringing us on the shore of the sea and clarifying once again the requirement of distinctiveness requested in order to obtain a valid registration for a trade mark.

The case is quite peculiar because it provides protection as a trade mark of the expression “MARE APERTO”, which is the English for “open sea”, for distinguishing fish products, overcoming the prohibition of registering common terms used in the course of trade as a trade mark.

The case was started by Mare Aperto S.r.l., a company based in Bari, which on the base of their Italian trade marks “MARE APERTO”, “Mare Aperto Bontà e Leggerezza” and “Mare Aperto Sapore e Tenerezza” (hereinafter, “MARE APERTO” trade marks), distinguishing food products included, among others, in classes 29, 30 and 31 of the Nice Convention[3], challenged the validity for lack of novelty of the later registered trade marks “MAREAPERTO” and the device trade mark “PESCE DI GALLIPOLI mare aperto”, for distinguishing the same products, owned by Rheo S.r.l., another Bari based company[4].

As a counterclaim, Rheo S.r.l. contested the validity of the “MARE APERTO” trade marks because they include “mare” and “aperto” which are words used in everyday language, thus, not suitable to become exclusive property of a single undertaking. Moreover, the aforementioned words, Rheo S.r.l. claimed, could not be included in a valid trade mark as they are “purely evocative of an environmental element (the sea) from which the products of the plaintiff come from”.

The Court, in deciding Rheo S.r.l.’s nullity claim, firstly considered the trade marks including other elements than the wording “MARE APERTO”, i.e. “Mare Aperto Bontà e Leggerezza” and “Mare Aperto Sapore e Tenerezza”.

With reference to these trade marks, the Court, although acknowledging that the “core” of the said trade marks is the common combination of words “mare aperto”, affirmed that the trade marks are characterised by the combination of other words. Therefore, the distinctive capacity of the said trade marks derives from the meaning of all the words composing the trade marks considered all together. The said meaning would go beyond the meaning of the two common words “mare” and “aperto”, providing the public with a different message than that conveyed by the mere combination of “mare” and “aperto”.

With reference to the trade mark “MARE APERTO”, the Court circumvented the prohibition to register as a trade mark common terms (as set out in Article 13 of the Italian Intellectual Property Code) affirming that the plaintiff succeeded in evidence that the contested trade mark acquired distinctiveness through an intensive use before the registration.

Passing on the invalidity claim concerning the defendant’s trade marks, the Court concluded the nullity of the said trade marks because they “are basically identical to those registered by the plaintiffs, also sharing the “core” of the plaintiff’s trade marks “MARE APERTO”.

If, on the one hand, the decision of the Court of Bari appears to be very straightforward in terms of defining the boundaries of the prohibition of registering as a trade mark a commonly-used word, on the other hand, it appears to be quite contradictory in affirming the invalidity of Rheo S.r.l. trade marks.

In fact, although the trade marks “MARE APERTO” of the plaintiff could obtain a valid registration, they could hardly claim a broad protection against later registrations since they are inherently weak, i.e. with a low degree of distinctiveness as they include the common terms “mare aperto”, and thus minor differences would usually be sufficient to differentiate the later trade marks, which could then obtain registration.

Therefore, possible “follow-ups” on this decision can be expected

[1]Since September 20, 2012, the Specialized Division in Intellectual Property Matters before the Italian competent Courts has been renamed Specialized Division in Business Affairs.
[2] Decision of February 1, 2013.
[3] Class 29 includes: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats.
Class 30 includes Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice.
Class 31 includes: Grains and agricultural, horticultural and forestry products not included in other classes; Live animals; Fresh fruits and vegetables; Seeds; Natural plants and flowers; Foodstuffs for animals; Malt.
[4] Mare Aperto S.r.l. claimed also the revocation of the adversary domain name and unfair competition, asking also for damages compensation.