Using a patronymic name as a trademark has less distinctive character in the wine sector

The patronymic trademark is generally considered as a strong trademark since it has no conceptual connection with the products or services that it distinguishes and, as such, it affords a wide protection even against slight similarities that may create confusion in the consumer’s mind.

However, the above statement must be mitigated in relation to the particular wine sector.

In the wine market, the assessment of confusion between word and patronymic trademarks undergoes less strict criteria than in markets of large-series products.

This was lately reaffirmed by the Italian Board of Appeal with judgement No. 53 of October 10, 2016 upholding the action against the decision of the Italian Patent and Trademark Office (UIBM) which denied the registration of the word trademark “Romagnoli” for products in class 33 (“wines”) as a result of the opposition filed by the owner of two previous patronymic trademarks “Laura Romagnelli”, one Italian and the other international designating Italy, for products in class 33.

The UIBM considered that even if between the two trademarks in comparison there was just a medium degree of visual, phonetic and conceptual similarity, the legal principle by which a lower degree of similarity of the signs can be balanced by a higher degree of similarity or the identity of goods and services should be applied.  Therefore it refused the registration of the trademark “Romagnoli”.

The surrendering company appealed the Board of Appeals against the existence of any similarity between the signs concerned.

According to the Board of Appeal, in the assessment of likelihood of confusion between signs in the wine sector two circumstances should be taken into account: on the one hand, the goods in question are high-quality goods competing with each other on the basis of quality differences and value for money, thus they cannot be confused; on the other hand, this is a sector dominated by small enterprises, mainly family run and often using family names as distinctive signs.

In view of the above, given the characteristics of the sector, a degree of similarity between word and patronymic trademarks can be tolerate if their use is responding to professional correctness.

In the present case, the addition of the first name to the last name in addition to the phonetical differences between the two signs have been considered a sufficient element of differentiation.

The decision in question has been taken a few months after the ruling of the Italian Supreme Court No. 2191 of February 4, 2016, recalled by the Commission itself, which stated that “in the wine sector, there are often enterprises commercializing the same products and led by homonyms persons that use their names as name of the enterprise or as trademark. Thus, since – in this sector – the patronymic has low distinctiveness, the addition of the name to the surname, especially if there are other descriptive elements, is sufficient to exclude the likely of confusion between the distinctive signs of the enterprises”.