The Italian Patent and Trademark Office grants reputed trademark protection to “EXCELLENCE” by Lindt

With decision dated 11.28.2023, in procedure no. 652022000087332, the Italian Patent and Trademark Office (UIBM) upheld Lindt's opposition against the registration of the ETNA EXCELLENCE trademark for chocolate and similar products, in light of Lindt's prior rights to the EXCELLENCE trademark.

In particular, the UIBM found that the EXCELLENCE trademark, used by Lindt in Italy since 1989 for its well-known high-quality chocolate, is to be considered "reputed" pursuant to art. 12(1)(e) of the Italian IP Code. This, in line with Art. 8(5) EUTMR, grants protection against any subsequent similar trademark, even if used for dissimilar products, when its use without due cause would take unfair advantage of the distinctive character or repute of the prior sign or would be detrimental to them.

In the decision under review, the Office recalls that a trademark has a reputation when "it is known by a significant part of the relevant public". This, in turn, “depends on several elements, including, in particular, the market share of the products bearing the trademark, the trademark’s geographical scope, the intensity and duration of its use, as well as the extent of promotional and advertising investments made by its owner”. And the proof of these elements "must be provided in a rigorous and unequivocal way, including through the submission of surveys or independent studies on the relevant market".

Having said this, the Office concludes that Lindt has in fact provided large evidence of: i) its promotional and advertising investments; ii) its commercial initiatives, covered by the general and sector press; iii) the value of its sales and market share, corroborated by an independent research; and iv) a very high percentage of consumers who associate the EXCELLENCE mark with Lindt, as demonstrated by an independent survey.

In this context, the UIBM notes, the subsequent trademark would be able to unduly exploit the appeal of the Lindt trademark, "appropriating its power of attraction and its advertising value by exploiting its reputation, image and prestige". Furthermore, its use could weaken the distinctive character of the EXCELLENCE brand, due to the loss of its uniqueness on the market; as well as tarnishing its image, in the case of products that are not similar or of low quality. Hence the rejection of the trademark application for the contested products, upholding Lindt's opposition.