One of the main characteristics of a trademark is its "distinctive character", which, from a legal perspective, is the capacity to distinguish a product or service as originating from a specific entrepreneurial source. A peculiarity of this characteristic—which also functions as a limit against market players seeking to misappropriate generic or common signs, thereby preventing their use by competitors—is undoubtedly that it can be more or less marked. This has inevitable repercussions on the level of trademark protection.
The descriptive trademark
The Codice della Proprietà Industriale (Italian Industrial Property Code—CPI) provides primarily, under Art. 13, that signs which have "become of common use in current language or in established trade practices" and those "consisting exclusively of the generic names of products or services or of descriptive indications relating to them" cannot be registered as business trademarks. This refers to trademarks indicative of the common name of a product or a product category and those merely descriptive of the essential characteristics or functions of the product they distinguish.
The latter case specifically concerns trademarks that, not only from a semantic or graphic point of view but also a conceptual one, succeed in directing the consumer's perception directly and intrinsically to the nature of the products or services they represent, and thus to an entire genus (e.g., the signs "jeans" for trousers and "video" for eye-care products were declared null). The ratio of the prohibition under Art. 13 CPI, as repeatedly emphasized by the Corte di Cassazione (Supreme Court of Cassation), stems therefore from the "concern that an exclusive right is created over words, figures, or signs that in common language are linked to the product type and must therefore remain in the common domain, to prevent the exclusivity over the sign from transforming into a manufacturing monopoly" (inter alia, Cass. civ. Sez. I, no. 1929/1998).
Similarly, at the community level, Regulation (EU) 2017/1001 on the European Union trade mark provides under Art. 7 that registration shall be refused for "trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service [...]" and those "which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade".
Weak trademarks and strong trademarks
Since the registration of signs that, however descriptive, retain a minimum of distinctiveness is permitted (a principle derived from the fact that both the Italian and European legislators use the adverb "exclusively"), this has led, primarily through judicial interpretation, to the distinction between so-called strong trademarks and weak trademarks.
The former are those which, not coinciding with the generic name of a product and not consisting of descriptive indications thereof, possess a greater distinctive capacity. This is usually due to the fact that strong trademarks utilize fanciful elements or common words that are not conceptually linked to the product or service they distinguish (a striking example is the "Apple" trademark: an apple can constitute a strong trademark when used in relation to the technological-information technology sector, but would conversely be a weak trademark if it identified products or services in the fruit and vegetable sector).
The latter are, on the contrary, those trademarks which, "while not identifying with the generic name [nevertheless] easily allow the product they [distinguish] to shine through" (Cass. Civ., Sez. I, judgment no. 7768/1990). These are therefore called weak because the object of exclusivity is only that part of the trademark that differs from the generic name, while the remaining part logically remains usable by others (Cass. Civ., supra). Examples of such trademarks are "Melinda", in this case for the production of apples, and "Poltronesofà" for the production and sale of sofas and armchairs.
Case law, particularly that of the supreme court, has also progressively noted how the distinction between so-called strong and weak signs, although not legislatively mandated, affects the degree of protection accorded to different trademarks. Indeed, the weakness of a trademark lies in the fact that its owner cannot object to another party using a trademark that is also close to the generic name if the latter, though perhaps identical in the non-distinctive part, differs in the monopolizable part of the trademark. The protection of strong trademarks is instead characterized by greater incisiveness, as even variations—even original ones—are unlawful if they leave intact the ideological core summarizing the "individualizing aptitude" of the registered sign (cf. Cass. Civ., Sez. I, judgment 5924/1996) (which does not mean, however, that the mere partial coincidence of another trademark is sufficient for an infringement to be found).
Secondary meaning
It is necessary, however, to highlight how a trademark initially lacking distinctive character can still, through the progressive reputation obtained over time among the relevant public, enjoy a so-called "rehabilitative" effect and transform into a distinctive or even strong sign. This phenomenon, known as "secondary meaning" and governed in the Italian legal system by Art. 13, paragraphs 2 and 3 CPI, occurs in particular when a trademark, thanks to the use made of it, acquires a meaning—additional to the original one—which determines its distinctiveness and thus guarantees its protection. To better identify the scope of this institution, consider for example the trademark "Il Giornale" (The Newspaper), which, despite having an originally generic, descriptive, and common-use meaning, has developed an intrinsic fame that allows the public to identify and distinguish it within the reference category.
The same can obviously occur in relation to a weak trademark that subsequently acquires popularity. In this regard, the Corte di Cassazione itself has emphasized how "this phenomenon, developed for the purposes of the so-called rehabilitation or validation of a sign originally lacking distinctive capacity—as it lacked originality or was generic or descriptive—which nevertheless ends up receiving it from the use made of it in the market, [has] been used to capture every evolution of distinctive capacity, i.e., also as a strengthening of the distinctive capacity of an originally weak—but not null—trademark that subsequently becomes strong through dissemination, promotion, and advertising" (see inter alia Cass. Civ., Sez. I, judgment 1861/2015).
From a more pragmatic perspective, it should finally be noted that the assessment regarding the acquisition of distinctive capacity, according to both Italian and European case law, must take place through a case-by-case evaluation and may examine various criteria additional and contingent to the nature of the trademark, including, in particular, the market share held by the trademark, the amount of investment made by the entrepreneur to promote it, the geographical extent, the duration of use, and possibly also statements from the Camere di Commercio (Chambers of Commerce) or other professional associations (see Court of Justice of the European Union, C-353/03).