How distinctive is a patronymic trademark? The Hugo Boss case

How is trademark distinctiveness assessed?

Distinctive character refers to the ability of a sign, whether a word and/or a figurative element, to distinguish particular goods or services on the market.

It should be noted that a purely descriptive trademark, meaning a sign that merely describes the goods or services concerned or their characteristics and qualities, is invalid under the law (see Article 22 of the Italian Industrial Property Code).

Where a trademark is dominated by descriptive or evocative elements, it is commonly referred to as a “weak trademark”. Owners of weak trademarks, namely trademarks dominated by descriptive or evocative elements, must generally tolerate the coexistence on the same market of other weak trademarks containing those same elements.

By contrast, a trademark is technically considered “strong” when it is not dominated by descriptive or evocative elements. In this respect, the owner of a strong trademark may effectively oppose the use of subsequent trademarks, even where they are relatively dissimilar, if they rely on or convey the same distinctive concept (the so-called conceptual core) or otherwise create an unjustified likelihood of association or confusion with the earlier strong trademark.

The Italian Supreme Court's decision

In Order No. 26877/2023, the Italian Supreme Court of Cassation held that the Board of Appeals had failed to give proper consideration to the patronymic nature of the “BOSS” trademark.

The Supreme Court recalled that legal scholarship and case law have consistently recognised that patronymic trademarks should be regarded as strong trademarks, meaning trademarks with a high degree of distinctiveness, since first names and surnames are generally not descriptive of the goods or services they identify.

However, despite the inherently distinctive character of the famous fashion house’s trademark, the prior existence of the patronymic “BOSS” trademark might not, in itself, prevent the registration of “Il boss dei panini”.

Indeed, the likelihood of confusion referred to in Article 12(a) of the Italian Industrial Property Code may be excluded where the patronymic trademark has several possible meanings and where the resulting semantic differences affect the distinctive character of the two conflicting signs.

Accordingly, the considerations previously made regarding the meaning of the word “boss” in the trademark “Il boss dei panini” become particularly relevant. The Board of Appeals should not have limited its assessment to the meaning that the word “boss” has acquired in the Italian language. Instead, it should have examined whether that meaning was sufficient to exclude, in the perception of the relevant public, any conceptual connection between the patronymic trademark “BOSS” and the word “boss” appearing in the sign “Il boss dei panini”.

Furthermore, the Supreme Court emphasised that the strong distinctive character of the “BOSS” trademark also derived from its reputation, a factor that had not been adequately considered by the Board of Appeals.

In any event, the Board of Appeals, to which the case was referred back, must not limit its assessment of whether “Il boss dei panini” lacks novelty solely to the likelihood of confusion. It must also give appropriate weight to the reputation acquired by the earlier “BOSS” trademark and consider whether there is a risk of unfair association or free-riding, namely whether the subsequent trademark may take unfair advantage of the distinctive character or reputation of the earlier trademark.