Edited by Ilaria Gargiulo, Partner at AMTF Avvocati

The value of a name: why trademark protection is a strategic choice
In competitive sectors such as catering, choosing a name for a business, or even for a single restaurant, is not just a matter of aesthetics or creativity: it is an even more strategic decision than in other sectors, affecting the business's ability to stand out in the market and generate value around its distinctive brand.

The name—and more generally the brand—is in fact the first element of recognition of the business and can be a fundamental asset for the company, for example, for access to financing or lines of credit, in the event of a sale of the business, lease of a branch of the company, or franchise development.

The trademark as an exclusive right
Pursuant to Article 7 of the Industrial Property Code (CPI), any sign capable of distinguishing the goods or services of one company from those of other companies may be registered as a trademark (and may therefore be a trademark).

Registration confers on the owner the exclusive right to use it and to prohibit its use by third parties for identical or similar products or services, when this could cause confusion among the public (Article 20 of the Italian Industrial Property Code).

The likelihood of confusion also includes the likelihood of association between the two signs and therefore exists not only when consumers believe that the products come from the same undertaking, but also when they may assume an economic link between the undertakings (for example, a partnership).

This risk is particularly high in a sector such as catering, where trademarks are often used orally and phonetic similarity can lead to actual confusion.

How is the likelihood of confusion assessed
The assessment of the aforementioned likelihood of confusion between distinctive signs is conducted through a comprehensive and summary evaluation, based on the overall impression produced by the conflicting trademarks.

The assessment must take into account the distinctive and dominant elements of the trademarks, the visual, phonetic, and conceptual similarities, the degree of recognition of the earlier trademark, and the identity or similarity between the goods or services.

Case law in the restaurant industry
In the restaurant industry, case law tends to apply these principles with particular rigor precisely because of the unique characteristics of the sector.

In this regard, the Court of Milan, in its recent ruling no. 25/2025, pointed out that the average consumer is not able to directly compare brands, but relies on imperfect memory.

For this reason, it has been reiterated that verbal elements have a dominant value in the assessment compared to figurative elements, as the former are easier to remember, and that the placement of common elements between the trademarks being compared in the first part of the trademarks has particular weight, as this is the part that remains most impressed in the minds of consumers.

On the contrary, the existence of other trademarks with common elements on the market is not relevant for the purposes of excluding the risk of confusion, as this is not in itself sufficient to demonstrate the reduction in the distinctive character of an earlier trademark in the context of a dispute.

Strong trademarks and weak trademarks: the strategic difference
In this regard, it is essential to understand the difference between strong trademarks and weak trademarks: the former have a high degree of distinctiveness because they are the result of imagination or originality; the latter, on the other hand, merely describe the characteristics of the product or service and therefore enjoy more limited protection.

Choosing an original trademark from the outset not only strengthens legal protection, but also allows you to position yourself more effectively in the market.

It is true that, as established by the Supreme Court in ruling no. 272/2025, even a weak trademark (or at least one that starts out as such) can be protected when the subsequent sign adopts mere formal variations that are insufficient to exclude confusion. but choosing a strong trademark upstream simplifies the entrepreneur's life in terms of its use and protection, from the decision to proceed with registration to any disputes against potential counterfeiters.

Descriptive or generic names, such as "Pizzeria Italiana" or "Ristorante del Centro," cannot be registered because they lack distinctive character and are not monopolized by a single operator.

The trademark registered as a corporate asset
An original, distinctive, and registered trademark is therefore an important corporate asset. It is not just a matter of preventive legal protection, but also an economically significant choice: a protected trademark can be valued in the balance sheet, sold for a fee, or licensed to enter product sectors other than its own.

The registration strategy for trademark protection
In this regard, therefore, it is advisable to include in the first steps following the choice of name (both at the start of the business and in the case of rebranding) consult a specialist professional about the distinctiveness of the chosen sign in order to assess its protectability (at least in abstract terms) and to carry out a prior art search before proceeding with trademark protection in order to verify its availability with respect to trademarks already in use and/or registered.

Registration must be carried out according to a precise strategy designed for the specific activity, both in terms of territories and product categories to be claimed in the trademark application.

Registrations are only valid in the territory in which they are made, and there is no registration that automatically covers all countries worldwide (with exceptions for certain groups of countries, such as the European Union trademark, which guarantees protection for the mark in all EU countries with a single filing).

As for classes, since it is no longer possible to claim the entire Nice Classification lists as in the past, it is advisable to take a medium- to long-term approach that includes claiming classes and specific products/services in each class that cover the company's immediate activities, but also possible foreseeable or desirable expansions in 3-5 years, considering that, once granted, the trademark lasts for 10 years from the date of filing (and the fees to the offices are paid only at the time of filing and cover the entire period now indicated).

In this way, it is possible to optimize the initial investment in terms of expenditure, ensuring sufficiently broad protection—but not excessive (which could then entail risks such as forfeiture due to non-use)—to create value around one's distinctive mark.

Source: Italian Catering