Jul 7, 2016

'Piz-za the Action' in Recipe Name Dispute

Background

Mr. Alfredo Di Lelio opened a restaurant in Rome in 1914 under the name 'Alfedo All Scrofa'.  Soon after he created a recipe for his pregnant wife which was added to the restaurant's menu.  He named the dish "fettuccine Alfredo".

The dish is said to have become well known after the famous Mary Pickford and Douglas Fairbanks from the US visited the restaurant and fell in love with it while on their honeymoon in 1927.  To express their gratitude, they gave Alfredo a golden fork and spoon along with a photo of them eating in his restaurant. The photo and golden cutlery were displayed on the wall of the restaurant.   The restaurant and the pasta dish became well known in the US and around the world.

Alfredo retired in 1938 and sold his restaurant to Mario Mozzetti's grandfather but in 1959 Alfredo came out of retirement and opened up a new restaurant not far from the original restaurant's location.  He continued to expand opening restaurants in the US.

Mario Mozetti is the current owner of the original restaurant.  In 2009 he successfully registered two Community trademarks for the marks ALFREDO and device and ALFREDO all Scrofa and device, both covering food, alcoholic beverages and restaurant services.

The first dispute between the two restaurant owners involved the ownership of the golden fork and spoon with both owners displaying such utensils in their restaurants.

Invalidity Application

Applications to invalidate the EUTM registrations were filed in 2012 on behalf of Alfredo Di Lelio.  Invalidity is a claim for cancellation of a trade mark registration.   One of the grounds for invalidity are that the trade mark should not have been accepted for registration in the first place due to the existence of an identical or a similar mark in relation to identical or similar goods or services. Court was dismissed.  The invalidity application was based on Alfredo's earlier registration for the mark L'ORIGINALE ALFREDO which was filed in 2012.

The EUTM's were successfully invalidated but Mr Mozetti appealed.  The appeal was unsuccessful and a further appeal to the General Court was dismissed.

Mozetti argued that the distinctive character of the word "alfredo" is weak since the use of the word is commonly used in connection with pasta and would be considered to be related to fettuccine a type of pasta. Mozetti produced the results of a google search to show that the mark was used by a number of third parties.

The Court rejected this argument and held that the google search included fettuccine rather than just Alfredo so would bring up reference to a type of pasta.

The distinctive element in the marks is the word "alfredo" is the element of the marks which the consumer will pay the most attention

The contract concluded in 1943 by the ancestors of the parties, when the original restaurant was sold, was not considered.  The Court held that the current circumstances must be considered and that there was a risk of confusion due to the similarity of brands and the goods and services in question.

Posted by: in: Case Law, News, Trade Marks

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