The “twilight” of trade mark distinctive function and the role in comparative advertising

Abstract

The main topic of the thesis is the evolution of trade mark functions with particular attention to the distinctive sign. The r.d. n. 929/1942 was modified in a substantial manner by d.lgs. n. 480/1992; other changes occurred across time, but the reform of 1992 constituted the turning point. The analysis is split up in two parties: the role of the functions of trade mark before and after the reform of 1992. From the old system there was an indissoluble bond between the trade mark and the company such that each product marked with that specific trade mark came from the same company. At the beginning trade mark established a distinctive sign as a traditional origin function; then with the crisis of the traditional origin function, trade mark acquired a commercial value through a process of dematerialization, in which it was protected in itself and not in relation to a company. Such that, nowadays it has not the same traditional origin function but obtains an advertising function, with the aim to attract consumers. Then, the topic moves to the analysis of the role of trade mark with reputation, dividing even here, the role and the protection before and after the reform of 1992. It is important to find out also the main characteristics of trade mark with reputation, introducing the concept of the connection and the notion of prejudice and unfair advantage in order to have a complete picture. Again, the focus shifts to the traits of unfair competition especially to the usage of comparative advertising; to understand how comparative advertising works, it is relevant the explanation of the requirements needed and the limitation occurred. Finally, the thesis carries out the analysis of two practical cases: L’Oréal and Google AdWords, both linked with the topics covered.