The aim of these articles is to keep our Clients and Associates updated about developments in the sector of Intellectual Property in general and our firm in particular. In this way, we wish to provide a broader view of the tools that the field of trade marks, domain names, patents, designs and related rights offers to entrepreneurs to enhance and protect their efforts in researching and developing new solutions and ideas.
‘Occhi Spaccanti’ and ‘Buongiorno Essere Speciale’: Between Media Virality and Trademark Protection
The recent case involving renowned Italian movie and TV series actor Raoul Bova has attracted significant public attention. Bova became the unwitting subject of widespread media exposure following the viral circulation of private messages and audio clips he had sent to a model (his official partner, too, is a model, but not the recipient of the messages!). These personal messages were made public by another well-known entertainment figure, seemingly without Bova’s consent, sparking intense online discussion.
Among the expressions used by Bova, two in particular captured extraordinary media traction: “Occhi Spaccanti” (which can be translated into English as “Piercing eyes” although the adjective 'spaccanti' does not actually exist in Italian) and “Buongiorno essere speciale dal sorriso meraviglioso e dagli occhi spaccanti” (which can be translated into English as “Good morning special being with a wonderful smile and piercing eyes”).
These phrases rapidly gained popularity across major social media platforms. Users not only shared the audio clips but also created memes, sketches, and other derivative content. Some companies even repurposed the expressions for commercial gain.
For instance, Ryanair cheekily referenced Bova’s message on its social channels with the phrase “Buongiorno passeggeri dal sorriso meraviglioso e gli occhi spaccanti” (in English: “Good morning passengers with a wonderful smile and piercing eyes”). Similarly, the well-known Italian football team SSC Napoli used the line “with a wonderful smile and piercing eyes” when unveiling a new player.
In response, Raoul Bova threatened legal action against both Ryanair and SSC Napoli, citing violations of privacy and unauthorized commercial use of his private voice messages - acts he claims have harmed his personal image.
On 5 August Bova took a proactive step by filing trademark applications in both Italy and the European Union for the phrases “Occhi Spaccanti” and “Buongiorno essere speciale dal sorriso meraviglioso e dagli occhi spaccanti.” These filings covered several classes of goods and services, ranging from cosmetics and apparel to advertising, event organization, and even weapons and ammunition.
Bova’s legal team framed the trademark strategy as a means to halt the unauthorized circulation of the voice messages and prevent the commercial exploitation of the now-viral expressions.
Can trademark registration truly achieve both of these objectives?
As is well known, the primary function of a trademark is to enable consumers to distinguish the goods and services of one business from those of others.
Trademark registration grants the holder exclusive rights to use the mark and to prevent others from using an identical or similar sign in the course of trade, for identical or similar goods or services.
However, these rights do not extend to addressing violations of privacy or the unauthorized dissemination of private communications, such as social media posts sharing personal voice messages.
These actions, however, may constitute criminal or civil offenses that must be addressed through criminal or civil proceedings in the appropriate legal forums.
Accordingly, the registration of Mr. Bova’s trademarks does not prevent the press or the general public from discussing the incident.
This is primarily because such usage would not qualify as trademark use - that is, use intended to distinguish one’s own goods or services in the marketplace from those of others.
Even under the interpretation advanced by Bova’s legal counsel, the media’s use of these expressions - for example, in newspaper articles - would likely be deemed descriptive rather than commercial in nature. In other words, the phrases would be used merely to recount the events surrounding the actor, not as trademarks. Therefore, Mr. Bova would not be entitled to invoke exclusive trademark rights to suppress such usage.
Partial Success: Commercial Use Is a Different Story
It is therefore unlikely that Mr. Bova’s trademark registrations will achieve the first objective-stopping the public circulation of his messages. However, the second objective - preventing commercial use by third parties - may be more attainable.
Consider a scenario in which a third party prints the phrase “Occhi Spaccanti” on T-shirts or merchandise for commercial sale. In such a case, trademark protection could indeed be invoked to prohibit the unauthorized use of the phrase, provided that such unauthorized use confers an economic advantage to the user.
Indeed, trademark law allows the trademark holder to block commercial use of the mark by others if it occurs in the course of trade and seeks to derive economic benefit. Mr. Bova could therefore theoretically enforce his trademark rights to halt such unauthorized commercial exploitation.
Complications and Challenges
That said, there are several legal and practical challenges to consider.
Firstly, the Italian trademark application for “Buongiorno essere speciale dal sorriso meraviglioso e dagli occhi spaccanti” has passed the absolute grounds examination by the Italian Patent and Trademark Office (UIBM). The application for “Occhi Spaccanti”, however, is still under review.
It is also far from certain that the European Union Intellectual Property Office (EUIPO) will reach the same conclusion and approve the marks for EU-wide protection.
As is known, only signs capable of distinguishing the goods and services of one business from those of others may be registered as trademarks. While it is indeed possible to register phrases or long expressions, they must serve as indicators of commercial origin - not merely as slogans or generic phrases.
This raises a critical question: Can a lengthy phrase such as “Buongiorno essere speciale dal sorriso meraviglioso e dagli occhi spaccanti” genuinely serve to identify the source of goods or services in the market?
If the EUIPO answers this question in the negative, the trademark will be denied registration.
Gaps in Trademark Coverage
Another issue concerns the scope of goods and services covered in Bova’s applications. Certain important classes were not claimed - such as Class 28 (toys) and Class 14 (jewelry).
If a third party were to use the phrase “Occhi Spaccanti” on a teddy bear or a bracelet, Bova would likely have limited recourse, having not included these classes in his application.
This scenario is not merely hypothetical: just days after Bova’s filings, the UIBM received two trademark applications for “Occhi Spaccanti” covering “unclaimed” classes, including 09 (electronics), 28 (toys), and 43 (hospitality).
Risk of Trademark Revocation
Yet another challenge is the risk of revocation for non-use.
Both Italian and EU trademark law require that a mark be genuinely used within five years of registration. Failure to do so - unless justified by valid reasons - may lead to the trademark being revoked. If Bova is unable to demonstrate real commercial use of the trademarks, third parties could initiate revocation proceedings for non-use, and, if such claims are successful, anyone could potentially appropriate the marks.
Conclusion
The trademark applications filed by Raoul Bova illustrate a compelling intersection of privacy rights, viral media phenomena, and intellectual property law.
While applying for trademark registration for “Occhi Spaccanti” and “Buongiorno essere speciale dal sorriso meraviglioso e dagli occhi spaccanti” cannot prevent public or media discussion of the events, it may serve as a valuable tool for curbing unauthorized commercial use of these now-famous phrases - provided the trademarks are successfully registered and actively enforced.