The Italian Supreme Court has ruled that national law allows the registration of slogans as trademarks, but all registrability requirements, including distinctive character, must be satisfied as for any other kind of trademark.

“LA TUA PELLE MERITA DI ESSERE TRATTATA BENE” (“your skin deserves to be treated well”) is the slogan that a company active in the cosmetics and pharmaceuticals sector had sought to register as a trademark with the Italian Patent and Trademark Office (IPTO).

The IPTO rejected the application on the grounds that the trademark lacked distinctive character and was therefore incapable of distinguishing the products or services of one company from those of other companies.

The applicant appealed to the IPTO’s Board of Appeals (BoA), which confirmed the IPTO’s decision. The BoA found, inter alia, that the sign fell into the category of commercial or advertising slogans and was devoid of any connection with the applicant’s company. The applicant appealed to the Italian Supreme Court against the BoA’s ruling.

The judgment of the Italian Supreme Court

Decision No. 37697/2022 of the 1st Civil Section of the Court of Cassation was published on 23 December 2022.

The ruling is of great interest because it spells out clearly, also with reference to the case law of the Court of Justice of the European Union, that Italian law allows the registration of slogans as trademarks; signs, indications and expressions that encourage the purchase of products or services, according to the decision, cannot be barred from registration as an Italian trademark solely on the ground that the applicant uses the trademark, or intends to use it, in a specific way.

The Supreme Court points out, however, that although trademarks cannot be barred from registration based on their use for laudatory or advertising purposes, in order to be registered the sign itself must in any case meet the distinctive character requirement, meaning that it must be perceived, by the relevant public, as an indication of the origin of the products or services from a particular company; in this connection, the court specified that a trademark may simultaneously be perceived as a slogan and as a distinctive indication of the origin of the goods or services.

Registrability must be therefore assessed with reference to the distinctive character of the slogan, and the mere categorisation of the sign applied for as an advertising slogan does not automatically imply that the sign is in itself devoid of distinctive character.

Although the Supreme Court ultimately rejected the appeal, essentially for reasons related to the formulation of the supporting arguments, this ruling is nevertheless excellent news for trademark applicants since it clarifies that it is possible to register a slogan as a trademark in Italy, and that the requirements for registration, including distinctive character, are the same as for trademarks that cannot be categorised as slogans.