Descriptiveness and Stylisation in Italy: Why Minor Graphical Tweaks Won’t Save Your Mark (Article 13 CPI)

Under Article 13 of Italy’s Industrial Property Code (CPI), marks that lack distinctive character cannot be registered. The UIBM’s examination on absolute grounds focuses heavily on whether a mark is capable of distinguishing the applicant’s goods or services from those of others — and descriptive marks face a strict standard. A common error by international applicants is to assume that adding a basic font treatment, colour, or simple geometric shape to a descriptive word will overcome a distinctiveness objection. In Italian practice, aligned with CJEU case law, this approach typically fails.

The Legal Framework: Article 13 CPI

Article 13, paragraph 1, of the CPI provides that the following cannot be registered as trade marks:

• Signs that lack distinctive character.
• Signs consisting exclusively of generic names of goods or services.
• Signs consisting exclusively of descriptive indications, including those that designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics of the goods or services.

Italy’s CPI provisions mirror Article 7(1)(b) and (c) of the EU Trade Mark Regulation (EUTMR), and the UIBM interprets them consistently with the extensive case law of the Court of Justice of the European Union (CJEU) and the General Court. This means that CJEU precedents on descriptiveness — including landmark decisions on the meaning of “exclusively descriptive,” the relevant public’s perception, and the assessment of composite marks — directly inform Italian examination practice.

Why Minor Stylisation Fails

The CJEU has consistently held that when a mark consists of a descriptive word element combined with non-distinctive graphical elements, the mark as a whole may still be refused. The key principle, applied by both the EUIPO and the UIBM, is that commonplace or banal graphic elements do not confer distinctiveness on an otherwise descriptive word mark. The reasoning is that the average consumer will perceive the mark through its verbal content — the word they read and pronounce — rather than through minor visual embellishments.

Examples of graphical treatments that typically fail to overcome descriptiveness under Italian practice:

• Standard or decorative fonts: Rendering a descriptive word in italic, bold, cursive, or other typefaces does not change its descriptive character.
• Simple geometric frames: Placing a descriptive word inside a rectangle, oval, circle, or banner is considered too banal to confer distinctiveness.
• Colour treatment alone: Applying a specific colour or gradient to a descriptive word does not overcome the objection.
• Generic symbols related to the goods: Combining a descriptive word with a symbol commonly associated with the goods (e.g., a coffee bean for coffee, a house for real estate) does not create distinctiveness.

The Composite Mark Analysis

When the UIBM examines a composite mark — one containing both word and figurative elements — it assesses the mark as a whole, but gives particular weight to the dominant and distinctive elements. Following CJEU jurisprudence, the word element of a composite mark is generally considered more prominent than the figurative element, because consumers typically refer to marks by their verbal content.

For a composite mark containing a descriptive word to be registrable, the figurative element must be sufficiently distinctive on its own — meaning it must be original, complex, and visually dominant enough that the overall impression of the mark is not reducible to its descriptive word component. The figurative element must go well beyond standard graphic treatments and constitute an independently distinctive creative element.

The Language Factor

The UIBM assesses descriptiveness in Italian as the primary language, but also considers terms in other languages — particularly English — that Italian consumers would readily understand. Given the widespread use of English in Italian commerce, marketing, and consumer culture, English descriptive terms are routinely refused for goods and services where the Italian public would understand their meaning.

The UIBM also considers whether a foreign word’s Italian translation is descriptive. A mark that is non-descriptive in its original language may be refused if the Italian translation directly describes the goods or services.

Strategic Recommendations

• Choose inherently distinctive marks: Coined, arbitrary, or suggestive marks avoid the descriptiveness issue entirely.
• Develop a genuinely distinctive device: If a descriptive word must be included, invest in a complex, original, visually dominant figurative element that consumers would perceive as the primary identifier.
• Do not rely on font, colour, or basic shapes: These are consistently treated as insufficient under both Italian and CJEU case law.
• Consider acquired distinctiveness: If a descriptive mark has been extensively used in Italy and has acquired secondary meaning, it may be registrable under Article 13, paragraph 3, CPI (discussed in a separate article).
• Test perception in Italian: Before filing, assess whether the mark or its Italian translation is descriptive from the perspective of the average Italian consumer.

Common Mistakes

• Assuming a stylised font creates distinctiveness: The UIBM, following CJEU standards, treats basic typographic treatments as insufficient.
• Ignoring English-language descriptiveness: English terms widely understood by Italian consumers are assessed for descriptiveness.
• Combining two non-distinctive elements: A descriptive word plus a generic symbol does not produce a distinctive mark.
• Underestimating the UIBM’s alignment with CJEU case law: The UIBM applies European standards rigorously.

Key Takeaway

Article 13 CPI establishes a strict distinctiveness standard, interpreted consistently with CJEU case law. Descriptive words cannot be rescued by minor graphical tweaks — decorative fonts, basic geometric shapes, or colour treatments are treated as banal and insufficient. For a composite mark containing a descriptive word to be registrable, the figurative element must be genuinely distinctive and visually dominant. The most reliable strategy remains choosing an inherently distinctive mark from the outset.