The case of white beer: invalidity of the mark 'La Bianca' as the sign coincides with a characteristic of the product.

With last December’s ruling no. 10253/2022, the IP Section of the Court of Milan ruled on the age-old issue of the assessment of the descriptive character of a trademark.

This is the background to the case: in February 2016, the well-known beer producer Heineken Italia s.p.a ("Heineken") had filed the EU trade mark application "BIRRA MORETTI LA BIANCA Luigi Moretti" No. 015131139 in class 32 ("beer"), as shown below:

Mr. Matthias Muller, a German brewer, had filed an opposition to this application, before the EUIPO, claiming a likelihood of confusion with his own European trade mark" LA BIANCA", itself registered for a brand of beer in August 2017. The Examiner had upheld the opposition.

In the face of that refusal, Heineken had requested the conversion of its EU trade mark application into a national trade mark application, pursuant to Article 139(1)(a) of European Regulation 2017/1001. This was followed in August 2019 by the filing of the national trade mark application before the UIBM and its subsequent publication. Where the European application is converted into a national application, as in the case in question, the date of the national filing retains the same date as that of the European filing.

In August 2017, Mr Muller had filed the Italian trade mark application 'La Bianca' in class 32, which was followed, notwithstanding Heineken's written objections against the registration of the mark for lack of distinctive character, by its publication.

Heineken therefore decided to bring an action against Mr Muller before the Court of Milan seeking a declaration that the trade mark 'La Bianca' was invalid due to a lack of distinctive character or, in any event, for a lack of novelty.

In support of its application, Heineken first of all pointed out that the trade mark 'La Bianca' is descriptive in nature insofar as it corresponds to the foodstuff having a clear common lexical meaning, widespread in collective social usage, which indicates a Northern European traditional beverage, white beer, as one of its qualitative and external characteristics. Not only that, according to Heineken, the mark is also invalid due to a lack of novelty, since its mark was established prior to the mark 'La Bianca', with a concomitant likelihood of confusion for the relevant public.

Mr Muller, for his part, asked, by way of a counterclaim, to ascertain and declare the invalidity of the mark registered by Heineken (i) for lack of novelty, given the sign was previously widely used by Mr Muller as far back as 2007; (ii) for registration made in bad faith by the well-known company. According to Mr. Muller, Heineken had, in fact, filed the application for the registration of the mark "BIRRA MORETTI LA BIANCA Luigi Moretti" with the intention of prejudicing Mr. Muller's interests, knowing that, at the time of the application, the latter was using the mark in the internal market. Mr Muller also pointed out that his mark, by reason of the presence of the determinative article 'la' before the word 'bianca', could not be regarded as merely descriptive.

The Court upheld the plaintiff's application for a declaration of invalidity. In particular, according to the decision, in order for a sign to be considered devoid of distinctive character within the meaning of Article 13(1)(b) of the Industrial Property Code ("IPC"), there must be a close relationship between the sign and the goods/services in question, so that the consumer can immediately perceive a description of the product. This is to prevent descriptive signs being reserved for only one undertaking by virtue of their registration as a trade mark and one undertaking monopolising the use of a descriptive term, to the detriment of the other undertakings, which would thus see 'the scope of the vocabulary available to describe their goods limited'.

In the case at hand, the Court held that the name "bianca" (white) was generic as an indication of belonging to a particular category of beer and, consequently, unsuitable for linking the origin of the product to a specific company, being devoid of distinctive capacity.

The Court, having declared the invalidity of the word mark "La Bianca", also observed that Heineken's mark "BIRRA MORETTI LA BIANCA Luigi Moretti" could not be considered to be descriptive, since that mark has a strong distinctive character conferred by dominant elements such as the image of the "man with a moustache", the colours used and the verbal component "Luigi Moretti", while the word "la bianca" is perceived as having an accessory role.

Muller's claims seeking a declaration of invalidity of the mark owned by Heineken for filing in bad faith and a declaration of infringement of exclusive rights as well as unfair competition by Heineken were also rejected, since, according to the Court, the defendant had not provided any proof of bad faith or the existence of a concrete risk of confusion for the public.