TRADEMARKS | The Italian Supreme Court on the qualification of the “Stella” sign as a weak trademark

Newsletter n. 89 – October 2023

TRADEMARKS

The Italian Supreme Court on the qualification of the “Stella” sign as a weak trademark

On 20 July 2023, the Italian Supreme Court (the “Supreme Court”) issued its Order No. 21755 on the intensity of the protection of a weak trademark, and on possible counterfeiting by a later sign. Firstly, the Supreme Court acknowledged that the “Stella” trademark is a weak trademark, therefore even minor alterations or additions are sufficient to exclude its confusability with a different sign. Secondly, it confirmed that the addition of the word “Rosa” to the term “Stella” is capable of neutralising the risk of confusion between the trademarks “Stella” and “Stella Rosa”, since it is the addition of an expression with no descriptive value. On the contrary, the trademarks “Stella Rosso” and “Stella Bianco” were found to be invalid since a verbal element descriptive of the product, namely the type of wine, is added to the word “Stella”. On the basis of these principles, the Supreme Court reasoned that the evaluation of the composite nature, verbal and figurative, of the sign “Stella Rosa” was crucial in the assessment of the counterfeiting, since each element contributed to the differences with the weak trademark, which, although slight, were decisive.