• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees’ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Clara Elinor Grünewald
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Battle of the Alfredo’s: Who owns the Alfredo Trademark?

12. July 2016

In a true Italian fashion of family sagas over the name Alfredo which gave birth to the “famous” dish of ‘fettuccine Alfredo’, the EUIPO and the EU Courts ruled on the trade mark conflict between Mr. Mario Mozzetti (EUTM Applicant and owner of “Alfredo alla Scrof” restaurant, former owned by Alfredo I.) and Mr. Alfredo di Lelio (Cancellation applicant, Alfredo’s son in third generation).

According to the legends of pasta, Mr. Di Lelio created in 1914 the original recipe for “fettuccine Alfredo”– uber famous abroad but not so much to Italians- to soothe his pregnant wife, which became one of the most renown dishes of his restaurant. His original restaurant in Rome is named Alfredo alla Scrofa at Via Della Scrofa, and his fame spread worldwide so much to be nicknamed Alfredo the Emperor of Noodles. Alfredo semi retired and sold his restaurant, to Mr. Mario Mozzetti which is still in business to this day. Some years later, Alfredo Di Lelio opened another restaurant nearby named Alfredo II and today dubbed Il Vero Alfredo ( the “true” or “original”).

In 2009, Mr. Mozzetti obtained the two registrations above which were the object of invalidity actions on the basis of the Italian mark L’ORIGINALE ALFREDO filed in 2012.
The Cancellation Division and Board of Appeal upheld the invalidity action. The General Court dismissed the appeal.

 

Distinctive or not?

Regarding the first plea, the Court confirmed that the request for proof of genuine use of the earlier mark was untimely and should be dismissed. Regarding the second plea based on Article 8(1)b) EUTMR, the relevant public is the average Italian given the nature of the the goods and services. It is also undisputed that the goods and services covered by the contested mark and the goods and services covered by the earlier mark are identical or very similar.

Mr. Mozzetti claimed that the distinctive character of “alfredo” is weak since the use of the word common to the conflicting marks, is widespread in the area of products and services in question. First, the term “alfredo” would be related to the “fettuccine”, a type of pasta, due to the existence of a dish called “fettuccine alfredo”. According to a research conducted on the Google search engine , the use of “fettuccine alfredo” is generalized. Finally, numerous marks containing the term ‘alfredo’ are registered in countries of the European Union for services in Class 43.

 

Not to be equated with “Fettucine Alfredo”?

However, the Court held that the list of Google search results was solely for the phrase “fettuccine alfredo” and not the term “alfredo” alone, so it did not demonstrate that this term has become widespread in the area of products and services or that it will be perceived, without the addition of “fettuccine” as referring to pasta.

Furthermore, it should be noted, as did the Board of Appeal, that the name “alfredo” is the element of the marks which the consumer will pay the most attention. Indeed, given that the name “alfredo” is placed above and it is written with letters of a size greater than that of the accompanying phrase (“alla scrofa”), the consumer will grant him more attention. In the earlier mark, the name “alfredo” is also the element that the consumer will pay the most attention, the ‘original’ term is perceived as a simple adjective to qualify the name.

So, give the identity or the high similarity of the goods /services, that the earlier mark had a normal distinctive character, and the fact that the term “alfredo” present in both signs, is of a more important distinction as the other elements, there is a risk of likelihood of confusion.

Last but not least, the Board of Appeal correctly found that the coexistence of the marks in a central area of Rome could not be considered because it was not demonstrated for a significant part of Italian territory. In addition, that coexistence was alleged for restaurants and not for food products covered by the marks. Finally, the contract concluded in 1943 by the ancestors of the parties was not relevant, because the risk of confusion must be assessed in light of current factual circumstances and in particular the similarity of brands, products and services in question.

 

Text-Source: Judgments T‑96/15 and T‑97/15 // MARQUES Class 46

  • share  
  • share 
  • share 
  • tweet  
  • share 

Category iconTrademark Law Tag iconTrademark

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: Trademark Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law
This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Recent Posts

  • Own trademark application fails – despite comparable trademarks: Equal treatment? 5. March 2021
  • Intel to pay 2.2 billion in damages – to VLSI / Fortress Investment 5. March 2021
  • BGH “FRAND II” – SEP Licensing as Distributor? 2. March 2021
  • Suspension of infringement proceedings 1. March 2021

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

5. March 2021
Own trademark application fails – despite comparable trademarks: Equal treatment?

Own trademark application fails – despite comparable trademarks: Equal treatment?

1. March 2021
Suspension of infringement proceedings

Suspension of infringement proceedings

16. February 2021
BGH: Black Forest ham – not only packaged in the Black Forest

BGH: Black Forest ham – not only packaged in the Black Forest

16. February 2021
UK trademark after Brexit: earlier UK trademark in opposition

UK trademark after Brexit: earlier UK trademark in opposition

11. February 2021
EU figurative marks: Panthé figurative mark – a panther mark?

EU figurative marks: Panthé figurative mark – a panther mark?

9. February 2021
BGH ruling: Classe E versus German E-Klasse

BGH ruling: Classe E versus German E-Klasse

Footer

Contact

Franklinstr. 61-63
D-60486 Frankfurt am Main
Germany

+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Customer Reviews

Meyer-Dulheuer MD Legal Patentanwälte PartG mbB Patentrecht, Markenrecht, Eigentum hat 4,78 von 5 Sternen 23 Bewertungen auf ProvenExpert.com

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Info secure emails
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • Google+
  • LinkedIn
  • xing
  • Email

Newsletter Signup

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form