Tell me your name and I will tell you your trademark
The fashion industry provides us with several examples of trademarks made up of patronymics. Just to name a few examples, we can cite the famous fashion designers and their maisons such as Alberta Ferretti, Ermenegildo Zegna, Loro Piana, Fabiana Filippi, Dolce & Gabbana, Zanellato. Many other references can be found on supermarkets’ shelves, for instance, Fiorucci for food products and cold cuts, Gentilini for biscuits, Sorelle Nurzia for nougat, Varnelli for liquors and Caffo for spirits, just to mention only some of the most renown trademarks.
The examples above allow us to answer positively – even though just theoretically – to the preliminary question “Can I register my name and/or last name as a trademark?”. That being said, it is also worth adding that a patronymic is usually considered to belong to the category of the so-called strong trademarks, that is to say those signs which are highly distinctive from other trademarks, as basically having no connection with the product or service they represent.
Moreover, when the trademark is made up of both the first and the last name, the prevailing case law awards it the role of “hearth” of the mark.
However, the so-called right to the name, which is recognised by our system, is frequently subject to a sort of compression whenever a patronymic used in a business has already been filed or registered by third parties, thus posing a risk of confusion for the consumer to whom the products and services – either identical or similar – are intended.
Under a regulatory viewpoint, apart from the case regulated by Art. 8 of the IPC (Intellectual Property Code) about the registration as trademarks of names other than the registrant’s, article 21 of IPC while identifying the limitations of trademark rights expressly establishes the lawfulness of the patronymic’s use (clause 1, letter a) during economic activities, when it corresponds to the name of the physical person and as long as it is used in compliance with the values of professional fairness.
In order to better establish the meaning of the sentence “as long as it is used in compliance with the values of professional fairness”, case law tends to consider allowed the use of the patronymic by its owner in case it has already been registered by third parties whenever it only has a descriptive function and not a distinctive one – as a trademark should – and so it doesn’t give the impression that there actually is a commercial relationship between the third party’s business and the right owner.
On the other hand, in terms of practical implications, the full registry name of the competitor can be reported even on the product and its label, but only as long as it excludes parasitism with the business owning the registered patronymic trademark. An example of licit use can be found when the good is distinguished by its own trademark – different from the full registry name – or when the use of the name has a descriptive function, thus it is indicated in regular characters or reduced size next to the address or headquarter and after the business name.
Therefore, the actual descriptive need corresponds to the principle of professional fairness when an indication of the name and/or last name is meant to provide the public with a true information about the product quality due to its manufacturing by specific entities. On the other hand, it is excluded when there is an association risk or a parasitic hypothesis.
In most cases, the “strength” of patronymics is subject to an exception in the wine sector, where the risk of confusion between names is subject to less strict examination criteria. Indeed, it often happens that, in the same cultivated lands, many families, that are active in the wine production in restricted geographical areas, legitimately use the same patronymic as a trademark. In such cases, the label plays an essential role since it needs to be able of distinguishing a product, in order to differentiate it from the competitors using an identical or similar patronymic.
Hence, in this specific sector, the patronymic is oftentimes considered to have a weaker distinctive strength and the addition of the first name next to the last name, especially if accompanied by further elements, has been deemed sufficient to exclude the likeliness of confusion of different companies’ distinctive signs [Cass. n. 2191/2016, Castella case].
In fact, in the wine sector, it is established that the trademark does not represent the only element capable of conveying the information that the consumer needs in order to consciously exercise his/her freedom of purchase: besides the wine type and the producing cellar, the consumer’s choice is influenced by the wine characteristics, such as the quality indications (IGT, DOC, DOCG), the year, the quality/price ratio.
But how is it possible to reconcile all these peculiarities influencing the consumer’s choice while approaching a wine with the general principle that, during the risk of confusion’s examination, the similarity between the signs needs to be assessed taking into account also the similarity between the products? Indeed, such criterion is generally applied to highly standardized products which are mutually available – even though only apparently – and subject to impulsive buying. Among these, wines should not be included, as they are quality products facing a strong competition with each other with regards to qualitative differences and quality/price ratio and frequently subject to continuous evaluations by experts.
The identity between wine products is to be intended – as also declared by the Board of Appeal – as belonging to the same product class, but not as average interchangeability of a single product with another one.
As a consequence, in the wine sector, a certain degree of similarity between word marks and patronymics is tolerated, but only as long as the use of the trademarks is compliant with the principles of professional fairness.
In conclusion, thanks to their distinctive character, patronymics can – abstractly – constitute suitable trademarks to effectively distinguish products/services. However, in order to understand the actual strength of a name and/or last name in relation to an economic activity, it is always advisable to seek support from experts of the field.