The protection of the trademark of a political party

The Court of Rome section XVII specialized in corporate matters, with the order of December 16th 2021 made important clarifications in relation to the minimum requirements necessary to protect the trademark of a political party.

Giving that there is not a specific discipline on the matter, to this day the jurisprudence provides the possibility for the trademark of a political party to find protection through the following institutes which operate on different levels:

  • The discipline on personality rights (firstly the right to one’s name) pursuant to articles 6 and 7 of the Civil Code, essential for the parties to be recognized by the voters and
  • The discipline on trademarks and distinctive signs pursuant to the Code of Industrial Property, where “the political subject carries out the activity of commercial character”.

The case

The above sentence had as object the controversy brought by “Partito Liberale Italiano” (Italian Liberal Party, also known as PLI, listed in the National Register of the Political Parties) which asked the Court of Rome to urgently order the “Partito Liberale Europeo (European Liberal Party, aka PLE) to stop the use of the figurative and word trademark, as well as the use of the company name “PARTITO LIBERALE EUROPEO”, as it considered that its use had been made in infringement of the trademark previously registered, “PARTITO LIBERALE ITALIANO”.

The PLE, on one hand, contested the lack of novelty, the exclusive use of words of common language and the mere descriptiveness of the name “PARTITO LIBERALE ITALIANO”.

The Court of Rome made an evaluation on the likelihood of confusion between the name “PARTITO LIBERALE ITALIANO” and the name “PARTITO LIBERALE EUROPEO” in order to establish the effective presence of an infringement of the property right of PLI.

In accordance with the principles on distinctive character, the scarce distinctive capacity of the signs made up of descriptive-generic expressions used to name political parties, though qualifiable as “weak trademarks”, does not allow modifications irrelevant to exclude the likelihood of confusion between the two names. The discerning element determining the existence of the risk of confusability concerns the perception of the public of the voters in relation to the differential value of the name.

The decision

Therefore, a global evaluation of the two company names revealed that they are both composed by descriptive words which makes them scarcely distinctive. Moreover, the words “partito” and “liberale” are identical in both signs in conflict. The diversity lies exclusively in the third word, wherein, in the contested sign, instead of “italiano” is used the adjective “europeo”.

The court considered such minimal difference as not sufficiently adequate to exclude the risk of confusion and of wrong identification among the social community of the two political parties at issue.

Moreover, the two parties could participate simultaneously in the European elections and this possibility could lead the average voter to think that the adjective “italiano” had been replaced by “europeo” in view of the elections, not distinguishing the different identity of the two parties. On the contrary, if the adjective identifies a different State of origin and operability of the parties, the risk of confusion would not exist (for example “Italian Liberal Party” e “German Liberal Party”).

In light of the above, the Roman Judge established the existence of the risk of confusion between the name “Partito Liberale Europeo” and the one previously adopted by the “Partito Liberale Italiano” and ordered the immediate termination, in every form and with any means, even in the symbol and through the Internet, of the name PARTITO LIBERALE EUROPEO”.

Elena Bandinelli