Proving Acquired Distinctiveness (Secondary Meaning) Under the Italian Industrial Property Code

When a trade mark application is refused under Article 13, paragraph 1 of the Italian Industrial Property Code (CPI) for lacking distinctiveness or being purely descriptive, there remains one pathway to registration: proving that the mark has acquired distinctive character through use. This concept, known in Italian practice as secondary meaning (significato secondario), is codified in Article 13, paragraphs 3 and 4 of the CPI. The evidentiary standard, however, is demanding — and the types of evidence required follow both Italian case law and CJEU guidance.

The Legal Framework

Article 13, paragraph 3, of the CPI provides that marks which initially lack distinctive character may nonetheless be registered if, before the filing of the application, they have acquired distinctive character as a result of the use that has been made of them. Paragraph 4 addresses a complementary scenario: a mark that lacked distinctiveness at the time of filing may still be upheld if it acquires distinctiveness after filing but before a third party requests a declaration of invalidity.

The combined effect of these provisions is that acquired distinctiveness can “validate” a mark that would otherwise be refused or invalidated — provided the trade mark owner can demonstrate that, through extensive and continuous use, the mark has come to be perceived by the relevant Italian public as identifying a single commercial source, rather than merely describing the goods or services.

The Evidentiary Standard

Italian courts and the UIBM, consistent with CJEU case law (in particular, the Windsurfing Chiemsee and Philips/Remington line of jurisprudence), assess acquired distinctiveness through a global evaluation of the evidence, considering all relevant factors. The burden of proof lies on the trade mark owner, who must demonstrate a changed perception among the relevant public. The key categories of evidence are:

• Market share in Italy: Data showing the mark’s share of the relevant market in Italy. Significant market share is a strong indicator that consumers associate the mark with a single source.
• Duration and extent of use: Evidence of how long the mark has been used continuously in Italy and the geographic scope of that use across the Italian territory. Sporadic or localised use is unlikely to suffice.
• Sales volume and revenue: Commercial data demonstrating the scale of goods or services sold under the mark in Italy, supported by invoices, financial statements, or audited records.
• Advertising and promotional expenditure: One of the most heavily weighted factors. Evidence of significant investment in advertising campaigns directed at Italian consumers — including print, television, digital, outdoor, and social media advertising. Expenditure figures and samples of actual campaigns are particularly persuasive.
• Consumer surveys and market research: Surveys conducted among the relevant Italian consumer public demonstrating that consumers associate the mark with a specific commercial source. Following CJEU guidance, surveys should be conducted by independent research institutes, use neutral and non-leading questions, and involve a representative sample of the relevant Italian consuming public.
• Media coverage and third-party references: Press articles, reviews, and media reports in Italian publications or media accessible to Italian consumers that reference the mark in connection with the applicant’s goods or services.
• Awards and industry recognition: Any awards, certifications, or accolades received in Italy that demonstrate the mark’s established presence and reputation.

The Italian Specificity Requirement

Acquired distinctiveness must be demonstrated with respect to the Italian territory and the Italian consuming public. International sales data, global advertising campaigns, and consumer surveys conducted outside Italy carry limited weight. The UIBM and Italian courts assess whether Italian consumers have come to perceive the mark as a source identifier.

However, evidence of international use and reputation can serve as supporting context — particularly where the Italian market has been exposed to the mark through cross-border advertising, international media, tourism, or e-commerce.

The CJEU Standard Applied in Italy

Italian courts apply the CJEU’s established framework for assessing acquired distinctiveness. The key principles include:

• The more descriptive the mark, the heavier the burden: Highly descriptive marks require stronger evidence to demonstrate that consumers have moved beyond the descriptive meaning and now perceive the mark as a source identifier.
• All evidence must be assessed globally: No single factor is decisive. The court considers the totality of the evidence package.
• The relevant date is the filing date (or, in the case of post-filing validation, the date before a third party’s invalidity request).
• The relevant public is the average Italian consumer of the goods or services in question, who is reasonably well-informed, observant, and circumspect.

The Administrative and Judicial Routes

Acquired distinctiveness may be invoked in two contexts:

• During examination or appeal: If the UIBM refuses an application for lack of distinctiveness, the applicant can submit evidence of acquired distinctiveness on appeal to the Board of Appeal (Commissione dei Ricorsi).
• In invalidity proceedings: If a registered mark is challenged for invalidity on distinctiveness grounds, the mark owner can defend the registration by proving acquired distinctiveness. This defence is available in both administrative proceedings before the UIBM and judicial proceedings before the Tribunale delle Imprese.

Strategic Recommendations

• Build Italy-specific evidence proactively: If you plan to file a descriptive or borderline mark in Italy, begin collecting Italian-market evidence before filing — local sales data, advertising spend targeted at Italy, distribution records, and media coverage.
• Commission consumer surveys: An independent survey showing that Italian consumers associate the mark with a single source provides some of the most compelling evidence. Ensure the methodology follows CJEU standards.
• Quantify advertising investment: Italian courts place significant weight on the scale and duration of advertising directed at the Italian market.
• Maintain consistent use: Evidence should show the mark used in the same form as filed, consistently over a sustained period.
• Prepare for a high burden on highly descriptive marks: The more descriptive the mark, the more comprehensive the evidence package must be.

Common Mistakes

• Submitting only international evidence: Global data without an Italian-specific breakdown is insufficient.
• Relying on a single type of evidence: A few invoices or one advertisement are not enough. The assessment is global, and the evidence package should cover multiple factors.
• Using biased or leading survey questions: Consumer surveys that use leading questions or non-representative samples will be discounted.
• Failing to demonstrate the mark’s perception has changed: The evidence must show that consumers no longer perceive the mark as merely descriptive — they perceive it as identifying a specific source.

Key Takeaway

Proving acquired distinctiveness under Articles 13(3) and 13(4) CPI requires a comprehensive evidence package demonstrating that the Italian consuming public has come to perceive a descriptive mark as a source identifier. Italian courts apply the CJEU’s global assessment standard, weighing market share, duration and extent of use, advertising expenditure, consumer surveys, and media coverage. The more descriptive the mark, the heavier the evidentiary burden. For brand owners, the most effective approach is to build Italy-specific evidence proactively and to commission independent consumer research before asserting the claim.