Published article on World Trademark Review  (n.20 August /September 2009)


The conservative approach of the Patent and Trademark Office and the courts to the protection of non-traditional trademarks, as well as limited national case law on the issue, mean that much remains to be clarified with regard to the scope of protection of such signs

As modes of communication evolve constantly and influence consumers’ daily lives, signs such as shapes, colours, sounds, smells and motions are increasingly perceived as source identifiers. Although Italian trademark practice is rather conservative, consumers’ and companies’ demands to protect nontraditional signs are forcing the legislature and the judiciary to adopt a more modern approach.
Thus, pursuant to Article 7 of the Italian Code of Industrial Property, all signs capable of graphical representation – in particular, words (including persons’ names), designs, letters, numbers, sounds,product shapes or packaging and colour combinations – may obtain trademark registration provided that they enable consumers to distinguish the source of the goods or services.

General issues
Italian law does not provide an exhaustive list of signs that may be registered as trademarks. As seen above, Article 7 of the Code of Industrial Property provides a limited list of signs that may be considered eligible for registration by the Italian Patent and Trademark Office (PTO).

Another important issue, which also applies to non-traditional marks, is that of graphical representation. The Italian legislature considered replacing the word ‘representation’ with ‘reproduction’ in Article 7, which would probably have led to the recognition that non-traditional marks are included in the scope of that provision, especially in view of the technologies now available. Unfortunately for mark owners, though, the legislature settled on the term ‘graphical representation’.

Case law on the issue of non-traditional trademarks is still limited in Italy and the issue is still disputed among commentators and judges. However, where no national case law is available, the decisions of the European Court of Justice (ECJ) apply and are binding for Italian judges.

Shape marks
The appearance of a product and its shape often catch consumers’ attention without the need to use words (either written or spoken). This enables marketers to develop subtle strategies to differentiate their products from those of competitors. Thus, three-dimensional shapes often make convincing source identifiers.

However, of all the types of non-traditional marks, shape marks are those that have triggered the hottest debate among Italian judges, the PTO and commentators.
This is because Article 9 of the Code of Industrial Property provides that “signs consisting exclusively of the shape which results from the nature itself of the product, or consisting of the shape of the product which is necessary to obtain a technical result or of the shape which gives substantial value to the product may not be registered as trademarks”.
This means that when the shape is required by the nature of the products, the shape lacks distinctive character and no trademark protection may be granted (Italian Supreme Court, Case C 01/14863,November 23, 2001).
Further, the PTO Board of Appeal argues that the rationale behind the prohibition of the registration of shapes that are dictated by the nature of the products is the need to prevent the monopolization of shapes that are needed for the products at issue (Decision 58/2001, October 26, 2001). The Supreme Court reached the same conclusion in a recent case (Case 7254, March 18 2008).
Moreover, trademark protection is precluded if the shape provides the product with substantial value (since design/ornamental patent protection would be more suitable). For instance, in a case involving a bottle of perfume, the PTO Board of Appeal held that the shape of the bottle could be registered if it was clear that consumers were not buying the perfume merely for the bottle (eg, as an ornament for the home), but for the fragrance contained in the bottle (Decision 37/2001, May 21, 2001).
Similarly, the Supreme Court rejected an application to register the shape of Ferrero’s Kinder chocolate egg (which is very popular among Italian children) featuring two colours (white chocolate inside and milk chocolate outside). The court found that the shape provided the product with substantial value as the dual colour was structurally linked to the product and no variations were possible unless the product lost its intrinsic nature (Case 13159, July 16 2004).
A recent decision of the Court of Turin confirms that meeting the requirements for three-dimensional shapes to be recognized as trademarks is extremely difficult. In the case at hand (Case, March 3 2008), the Court of Turin held that the shape of the Smart car may be validly registered as a Community trademark because:
– it is not required by the intrinsic nature of the product;
– it is not needed to achieve a technical result
– it does not give substantial value to the vehicle.

Despite these rulings, no consistent case law on shape marks currently exists.

Sound marks
Sound combinations have always been protectable under copyright law. However, a more effective (and potentially unlimited) level of protection may also be available under trademark law if some requirements are met.

Increasingly, consumers can recognize the source of products and services through jingles or the particular sound a product makes.

Case law is scarce as the courts and the PTO Board of Appeal have had limited opportunities to decide on the issue. Accordingly, when faced with sound mark cases the Italian courts would have to apply the rather abstract principles set out by the ECJ.

The Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has found the roar of a lion to be registrable as a sound mark. It has also provided clear guidelines with regard to the requirement for graphical representation.

The board stated that “the fundamental registrability of sound marks as Community trademarks is not disputed … provided it can be represented graphically. [However,] the question of the graphic representation of such marks is still being debated… If the sound mark involves music in the traditional sense of the word, there is an obvious way to represent it graphically… On the other hand, the situation is different when it is not music in the traditional sense … that is to be registered as a sound mark, but animal noises… Here, representation by musical notation regularly fails to work… [As a result,representation by means of a sonogram is comparable with representation using musical notation.(Case R 781/1999-4, August 25 2003).
The three key Italian decisions with regard to sound marks were issued by the Court of Naples, the PTO Board of Appeal and the Supreme Court.

Despite the reluctance of the Italian courts to take a position on novel issues without additional guidance, during an interim injunction proceeding the Court of Naples stated that a musical jingle for advertising purposes may be considered a sound mark (Case 3753/2006, March 16 2006).

The PTO Board of Appeal decision concerned the submission of samples for a sound mark. An applicant had submitted an audiotape recording of the sound mark for which it sought registration. The PTO examiner rejected the application on the grounds that no graphical representation had been provided. The Board of Appeal reversed the decision, holding that it is potentially feasible to convert a recorded sound into musical notation, thus defeating any finding of lack of graphical representation.
Accordingly, the board declared the application admissible (Case 40/2001, July 5, 2001).

On further appeal, the Supreme Court affirmed the board decision (Case 1061, January 19 2006).

Colour marks
In one key decision, the Court of Milan held that primary colours are not registrable (Case July 30 2002). However, by and large, Italian courts have issued few decisions on colour marks and the decisions should be interpreted in light of the ECJ principles on the matter.

According to the ECJ, colours may acquire a certain degree of distinctiveness as applied to specifically identified goods or services, provided that they may be represented clearly, exhaustively, objectively and graphically. To do so, the colours at issue should be identified by an internationally recognized identification (Case C-104/01, *Libertel*, May 6 2003).

Olfactory marks
Olfactory marks are the most controversial type of non-traditional marks because of the difficulty to represent them graphically. Although no cases have reached the Italian courts to date, the courts would have to apply the strict ECJ case law on the issue.

A legal framework that can accommodate new types of mark is being built as more cases reach the courts. However, much remains to be clarified. Neither the Italian legislature nor the PTO should miss the chance to provide brand owners with the tools they require to give their investments the best possible protection.