The advertising slogan containing third-party famous trademarks cannot be protected

With the recent sentence of March 14th 2022 no. 8276, the Italian Supreme Court of Cassation stated that an advertising slogan referring to particularly well-known trademarks cannot be protected by copyright.

The case

The case concerned the advertising slogan “500% FIAT”, designed and filed before the SIAE as an original work by someone who was not FCA S.p.A (already Fiat Group Automobiles S.p.A). The creator of the slogan claimed therefore the property right, stating that the use made by FCA was unlawful and asking for the compensation for the suffered damages.

However, the Court did not accept the motivations of the author of the slogan and denied that the advertising slogan “500% FIAT” had a creative character.

As a matter of fact, the advertising slogan in question was inseparably connected to the company name “FIAT” and to its “500” car model. Therefore, by evaluating the advertising message on the whole, the reference to a trademark that is particularly well-known and exposed to the admiration of the public is clear, as it is clear that the aimed effect of the message is the “knocking-off” connected to the marketing of the products bearing such trademark. As the Court recalls, it is a popular marketing technique that takes advantage of the notoriety, the success or the fame of the slogan represented in the advertising message and that concerns not only the natural people lending their notoriety in favor of the sponsored product, but also slogans which contain the essential reference to the notoriety of the trademark they allude to.

In such cases, in order to recognize an autonomous protection to the advertising message, the Judge will have to evaluate the pairing of the notorious element with the quid pluris of the message and ascertain if, without the knock-off effect given by the notorious element, the advertising message maintains the evocative character.

In the case under exam, the Supreme Court of Cassation confirmed the previous decisions of the territorial Courts ascertaining that in the slogan under exam the notorious element (the Fiat trademark) is inseparably linked to the other part of the slogan (the allusive percentage).

The decision

Therefore, the Court concluded that the distinctiveness of the slogan “500% FIAT” does not rely on its creativity but on the feeling of prestige generated in the public which associates the product to the admiration held towards the brand. If the slogan were to be deprived of the trademark, it would lose its evocative capacity and would not have any communicative effect: the public would not receive the advertising message without the allusive reference to the notorious trademark.

Therefore, the Court affirmed the following principle of right:

“On the theme of copyright, the claim, pursuant to article 2(4) of the Italian Copyright Law n. 633 of 1941, of the property right for the registration of an advertising message (so called slogan or claim), postulates that the originality of the work must be demonstrated, except when the message refers to a mark already registered or with a strong evocative capacity, because that link, for its autonomous evocative power, decreases the creative part of the slogan and excludes the innovative character thereof”.

Ilaria Feriti