Weak or not: Boss of what? – An Italian dispute over the strength of a trade mark

29th November 2023

On 20th September 2023, the Italian Supreme Court issued an interesting decision that clarifies some questions concerning the qualification of the strength of a trade mark and the corresponding protection against the likelihood of confusion.

Background – dispute between “Boss” and “Il boss dei panini”

In 2016, a company active in the catering sector, Big Food Catering Industries – Ristorazione e Fast Food, filed an application for registration of the word trade mark “Il boss dei panini” (in Italian “the boss of sandwiches”) with the Italian Trademark Office. In 2020, the Office finally upheld the opposition filed by the German company Hugo Boss Trade Mark Management GmbH Co. & KG, the holder of the prior EU trade mark “Boss”. However, the Board of Appeal annulled the decision of the Trademark Office.

According to the Board, the word “boss” would be nowadays commonly used in the Italian language, and hence the prior “Boss” trade mark would be weak. Consequently, the presence of small differences in the subsequent trade mark would be sufficient to eliminate the likelihood of confusion between the two.

Hugo Boss appealed against the second instance judgment before the Italian Supreme Court.

How to assess the strength of a trade mark and its level of protection

On appeal, the Supreme Court found that the Board of Appeal had made some mistakes in its assessment of the weakness of the trade mark.

First of all, the Court pointed out that a trade mark is weak if it is conceptually linked to the goods or services designated by the sign. Therefore, any common word may constitute both a “weak” or a “strong” trade mark depending on its conceptual affinity with the goods or services it refers to. Thus, the Italian Supreme Court disagreed with the Board of Appeal: the widespread use of a term is not a sufficient reason to establish the weakness of the trade mark. Instead, the strength of the trade mark must necessarily be assessed in relation to the products and the market sector concerned. In the case at issue, there seems to be no direct conceptual affinity between the word “boss” and food products.

Second, the Court recalled that strong and weak trade marks enjoy different levels of protection. In the case of strong marks, even substantial and original alterations which maintain the essential identity, or the ideological core of the mark are illegitimate. On the contrary, even minor modifications or additions to a weak trade mark would be generally sufficient to avoid confusion. The Italian Supreme Court highlighted that a similar distinction can also be found in the EU law.

Third, the Court held that the Board of Appeal failed to examine both the acquired reputation and the patronymic nature of the trade mark “Boss”, which could have enhanced the distinctive capacity and hence the strength of the earlier trade mark. However, according to the Court, the strength of the prior trade mark does not automatically preclude the registration of the Italian trade mark “Il boss dei panini”. In fact, the likelihood of confusion which justifies Hugo Boss’ opposition may not be established if account is taken of the multiple meanings of the term at issue. In the present case, the Court stressed the importance of examining whether there is any conceptual link between the patronymic trade mark “Boss” and the same term used in the expression “Il boss dei panini”. There would probably be no likelihood of confusion if the terms were used with two different meanings.

The Italian Supreme Court therefore annulled the appealed decision and referred the case back to the Board of Appeal for a new decision considering the principles outlined above.

Conclusion – it can be all about the exact meaning of a trade mark

The decision of the Italian Supreme Court sets out some important concepts that should be kept in mind when seeking to register a trade mark or opposing another’s registration. First, a word trade mark consisting of a common term is only weak if it has some conceptual connection with the goods or services it refers to. Second, strong and weak trade marks enjoy different levels of protection. Finally, when evaluating the likelihood of confusion, two identical terms used in the two trade marks must be considered in the light of their precise meaning out of the many possible meanings.