Geography or Monopoly? The High-Stakes Battle Over Trademarking Place Names in Italy

When is a place name just a place, and when can it become the property of a company? In the shadowy intersection of intellectual property law and commercial ambition, the fight over who controls a city’s or region’s name is heating up. Recent legal drama in Italy has thrown the spotlight on the delicate, often contentious issue of registering geographical names as trademarks - a decision with ramifications for businesses, consumers, and even national identity.

Fast Facts

• Italian authorities have long been reluctant to grant trademarks for geographic names without official approval.
• A 2025 decision by the Italian Patent and Trademark Office’s Appeals Commission set new criteria for when a place name can be trademarked.
• The use of “MILANO” for a car model sparked national debate after concerns it could mislead consumers about the car's origin.
• The “BIRRA LURISIA” case clarified that if consumers don’t associate a name with a specific place, it may qualify as a distinctive trademark.
• Key factor: whether the geographic name influences consumer choices or is perceived as a mere descriptor.

The Battle for Place Names: New Rules, Old Tensions

The Italian Patent and Trademark Office (UIBM) has historically been wary of letting companies monopolize place names, fearing confusion and unfair advantage. In 2024, controversy erupted when a renowned automaker tried to name a new model “MILANO,” despite the vehicle being produced outside Italy. Authorities argued this could deceive buyers into believing the car was Italian-made, pressuring the manufacturer to abandon the name despite no explicit legal breach.

The issue resurfaced with the “BIRRA LURISIA” case, pitting a would-be beer brand against an established beverage company already using “LURISIA” - itself the name of a small town in Piedmont. The Appeals Commission’s 2025 ruling cut through the legal fog: a geographic name can only be trademarked if, in the eyes of the average consumer, it doesn’t immediately evoke a specific place or influence purchase decisions based on that association.

The ruling emphasized the consumer’s perception: if a name like “LURISIA” is not widely recognized as a place, or if its use does not sway buyers by implying origin or quality, it can serve as a distinctive trademark. However, the Commission warned that minimal differences between similar marks (like “LURISIA” and “BIRRA LURISIA”) could still cause confusion, and thus, registration could be denied.

This nuanced stance marks a shift from blanket refusals, offering more flexibility - but also more complexity. Companies seeking to trademark geographic terms must now prove that their chosen name is not a strong geographic signifier for the target market, nor a factor in consumer decision-making.

Looking Ahead: Public Good or Private Gain?

The latest Italian decision injects much-needed clarity, but also places the burden on applicants to demonstrate the distinctiveness of geographic names. As global brands increasingly seek local flavor, the battle over who gets to own a piece of geography is far from over. For now, the consumer’s perception - not just the map - will decide the fate of place-name trademarks.

WIKICROOK

• Trademark: A trademark is a legally registered symbol, word, or design that identifies and protects a brand or product from imitation.
• Distinctiveness: Distinctiveness is a quality that enables trademarks or identifiers to uniquely distinguish goods, services, or entities from others, ensuring clear source identification.
• Toponym: A toponym is the name of a place or location, often used in cybersecurity to identify origins or targets in data and threat analysis.
• Consumer Perception: Consumer perception is how buyers interpret or understand a brand or trademark, impacting trust and security decisions in the cybersecurity field.
• Opposition Division: The opposition division reviews and decides on third-party challenges to trademark applications before final registration, protecting existing rights and legal interests.