It’s possible to record as a brand a word of generic use if following the use has purchased a distinctive character.
A mark without a distinctive ability can subsequently acquire it because of the elevated commercial diffusion and of the activities of publicizing that can radically turn the distinctive perception of the sign into the market of the consumers.
The phenomenon is known with the term secondary meaning:
” it is able a mark become badge because of secondary meaning to also preserve an use generic and common place that, with such phenomenon the common word maintains the original meaning to the meantime it assume a secondary of it of sign badge of the product in the mind of the consumers that they end up attributing at the end they not only use the original meaning but also that of indicator of the origin of the products from one determined enterprise which it spontaneously comes in partnership.”
Therefore also a common word, what he could be “Rotoloni”, can deserve to be recorded as a brand if he shows that for the consumers that word doesn’t recall only to the mind an any “rotolone” but above all, if not exclusively, the Rotoloni of a particular brand.
Just now the Supreme Court is occupied of Rotoloni of Sofass underlining that inside of worth it is always important an accurate analysis on acquires him of distinctive trait of the sign that cannot be ignored.
The Supreme Court, in the sentence of the 19.04.2016 ns. 7738 have recognized a vice of motivation in the sentence contested that has declared the mark invalid, in the measure has not adequately justified should had been considered irrelevant the opinion poll furnished from the Sofass and in such case could not be granted an examination of investigation through a technical consultation of office.
The Court affirms therefore two important principles.
In first place, in relationship to the fact that the mark Rotoloni had always been used and known in combining with the mark Regina has confirmed that
“a sign can also acquire distinctive character following the use that of it has been done, also as part or in combination with another recorded mark: this through the test that the interested environments perceive the product or the service designated by that only mark as coming from one determined enterprise”
In the second place, the Court has affirmed that
“it does not convince on the logical plan of the reasoning the affirmation of the sentence contested according to which it would be irrelevant for the purposes of the demanded proof of the acquisition of a secondary meaning of the mark the positive answer of half of the interviewed which according to the party consultation resulting from the market survey re- connects the word Rotoloni to the producer of the Regina paper”
in fact according to the Court
“of the two, one: either the party consultation is reputed reliable and therefore the deriving consequences must be drawn from the datum resulting from it; or the contrary is assumed and then the offer of proof formed in court must be allowed also with adequate courteous repetition of the investigation.”
The sentence has confirmed therefore the importance of the opinion poll but at the same time it has expectation that in the case in which the same one doesn’t offer entirely convincing results the Judge must grant the appeal to the part to the technical consultation of office, tool of which the Court can use (and it owes) for clarifying it every doubt on a matter that is crucial for the validity of the mark.