In February 2014, La Molisana Spa sent a warning letter (“diffida” in Italian) to its competitor Barilla G. and R. Fratelli Spa, demanding that the company refrain from using the expression ‘spaghetti quadrati’ (squared spaghetti) to designate one of its products. According to La Molisana, the expression constituted a counterfeiting of its registered trademark ‘spaghetto quadrato,’ which granted them the exclusive right to use the name.<\/p>\n
In response to the warning letter, Barilla sought, from the Rome Tribunal, a declaration of nullity for the designation ‘spaghetto quadrato’, arguing that it lacked the distinctive character necessary for the validity of a trademark. In other words, according to Barilla, in the eyes of the consumer, the expression ‘spaghetto quadrato’ is not capable of distinguishing one product from another of the same kind, attributing it to a particular company.<\/p>\n
According to Barilla, the expression ‘spaghetto quadrato’ is nothing more than a generic term for a long pasta with a square section. It is therefore a descriptive term and not a trademark, and the holder cannot claim a monopoly on its use.<\/p>\n
On the other hand, La Molisana argued that it is a valid trademark because that particular type of pasta was known in the market not by the name ‘spaghetto quadrato’ but by the expression ‘spaghetti alla chitarra’ or ‘a sezione quadrata.’ Therefore, ‘spaghetto quadrato’ would identify specifically La Molisana’s pasta.<\/p>\n
Furthermore, according to La Molisana, the two words ‘spaghetto quadrato’ have acquired distinctive character over time. Due to the intensive use that the company made of this expression in the market and in advertising, consumers would have learned to recognize a certain type of pasta from a certain producer.<\/p>\n
The Tribunal concluded that the expression ‘spaghetto quadrato’ cannot constitute a valid trademark as it was originally devoid of distinctive character, being exclusively made up of generic indications about the characteristics of that type of pasta. Moreover, according to the Tribunal, La Molisana had not provided sufficiently convincing evidence that the use of this expression as a trademark had been so intense and prolonged over time that consumers associated the name with a certain type of pasta from a certain producer.<\/p>\n
The Rome Tribunal thus declared the nullity of the trademark ‘spaghetto quadrato.’ This decision was also confirmed on appeal and by the Court of Cassation with the decision of January 4, 2022, No. 53.<\/p>\n