Descriptive marks and proof of secondary meaning – the IP Court of Brescia and the “Aste Giudiziarie” case

A recent summary ruling of the Brescia, Italy, IP Court, offers some insight in the matter of proof of acquired distinctiveness in trademark cases before the Italian IP Courts.

The petitioner, a company operating since the ’90s in the online judicial foreclosures sector, claiming exclusive rights on the “aste giudiziarie” (“judicial auctions” in Italian) mark – which formed the core of its company name, domain name and registered trademarks – sought an interim injunction, prohibiting the use of the same mark by a recently incorporated competitor.

The defendant, stigmatizing the petition as an attempt to monopolize generic and common terms, claimed that it should be dismissed on the grounds that the trademark in suit was descriptive in nature and, as such, devoid of  any distinctiveness and invalid.

The petitioner invoked in reply the “secondary meaning” doctrine, noting that it had used the words in its trade for over twenty years, first as its company name and domain name and later also as (the word component of) registered trademarks, and arguing that the mark, though initially generic, had acquired distinctiveness through use. The petitioner also stressed that it did not want to outright prevent the use of the words per se, but only their use as a trademark for similar or complementary services.

In order to prove acquired distinctiveness, the petitioner filed evidence of quantitative and qualitative data, relating to its nationwide office presence, the number of public offices served, the number of users and visitors to the website, the preeminence of its website in Google searches, the number of its marketing efforts over the years, such as the sponsorship of seminars and conferences.

The defendant argued, however, that the evidence offered established only use of the mark, not the alleged effect of that use, i.e. a change in perception of the relevant public’s mind such as to attribute to the mark, in addition to its primary meaning, a secondary and distinctive meaning; the latter should have been proven in a more direct way, by means of opinion polls or surveys.

The Court, however, took a different view, noting that within Italian law there are no specific provisions as to the means for providing evidence of acquired distinctiveness and finding that the circumstantial evidence offered by the petitioner was satisfactory to that end.

As a result, the Court was satisfied that there existed a prima facie case of trademark infringement and unfair competition and, having also found likelihood of irreparable harm, ordered the defendant to change its company name and to cease using the words in suit as a trademark (either alone or in connection with other words), setting a penalty of € 500.00 for each day of delay in the implementation of the order and each breach of the same.

Even though this decision has the intrinsic limits of any summary ruling, it remains a notable precedent for the specific issue addressed.