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The merits of the rulings and the
assessment of the likelihood of
confusion between the trade marks
are clearly based on the OHIM case
law, obviously taking into account the
point of view of the Italian consumers
and the local jurisprudence, not always
concordant with the OHIM policy.
By examining the said decisions in
relation to the comparison between
trade marks, it is possible to notice
that the assessment process has
always been conducted by the Office
on the basis of the OHIM principle,
acknowledged by our case law, that
the evaluation of the likelihood of
confusion, as regards the conceptual,
aural and visual similarity between the
signs, is not an analytical process but
it must take into account all the
elements of the signs as a whole,
considering the distinctive and
dominant components, in the way that
the relevant consumer would
appreciate the mark, relying upon the
imperfect image of the latter kept in
his memory.
It is also possible to point out two
other recurring OHIM case law
principles, which may be considered
acknowledged by the jurisprudence of
the Italian Office.
In particular, trade marks sharing the
first (fanciful) part and presenting
some similarities in their second
portion have been deemed similar on
the basis of, among others, the
principle that the consumers' attention
is focused on the initial part of a trade
mark. In fact, the above principle has
been recalled and taken into account
in deeming the following trade marks
respectively confusingly similar in
connection with identical or similar
goods in class 5:
· TERRAFOR (word) v TERAFLOG
(word),
v OPTIMA DERM CREMA
(word),
In the same sense, the following trade
marks, different in their first part, have
not been acknowledged confusingly
similar in connection with
identical/similar goods in class 5:
· REDIHALER (word) v EFFIHALER
(word),
· RIPACTIVE (word) v
· MEDIFLOR (word) v DELIFLOR
However, the following trade marks,
even though they do not share the
first element, have been deemed
confusingly similar for identical or
similar items in consideration of their
overall similar impression or of the
descriptiveness of their prefix:
· EZEREX (word) v HEREX (word),
· METOPLUS (word) v MEMOPLUS
(word),
· EUFLUX (word) v
in this case the prefix EU of EUFLUX
has been deemed descriptive for
Italian consumers.
Worthy of note is a recent case where
trade marks sharing their first
element, and presenting similarity in
their remaining component, have
however been deemed dissimilar in
connection with identical/ similar
goods in class 5: FORTEZZA v
FORTENZA. In this case the marks
differ in a single character only but the
Opposition Division deemed that the
semantic difference between the signs
counteracted their visual and aural
similarities given that the word
FORTEZZA endowed of a clear and
specific meaning in Italian so that the
public is capable of grasping it
immediately.
The other recurring principle in the
opposition decisions is that in trade
marks formed by both word and
device elements, the verbal component
remains more imprinted upon the
consumer's memory and therefore
must be basically considered as the
dominant component of the sign. The
verbal element has been deemed
dominant in both signs
(deemed similar), in
(deemed similar to OPTIMA DERM
CREMA word), and in both
and respectively v by the
Opposition Division. These two last
decisions, however, have been revoked
by the Board of Appeal which deemed
that the central figure in colour, would
grasp the consumers' main attention
being the dominant element in the
applications and ..Also in the
trade mark the device
component has been deemed
dominant in the mark, preponderant
on the verbal element and this played
an important role in acknowledging
the difference to RIPACTIVE word
mark.
Conclusions and practical tips:
The above picture highlights that the
proceedings have been well received, a
consistent number of oppositions have
been lodged, the great majority of the
proceedings are concluded by a
settlement between the parties and
opposition proved to be cost-effective.
The figures show that the majority of
the decisions upheld the opposition
and this is also notable with reference
to trade marks claiming class 5 where
around 72% of the oppositions were
accepted. Considering that around
28% of proceedings are upheld, it is
certainly worth appealing against the
decisions when there is no satisfaction
with the same.
In light of the above, it is possible to
assert that the Italian opposition
proceedings may be an incisive and
very accessible tool to force the other
party to amicably solve the matter or
to bar the registration of conflicting
marks.
As far as trade marks in class 5 and
their protection and enforceability is
concerned, it is important to evaluate
in advance the risk associated with
adopting a trade mark covering class 5
and/or the chances of success in
opposition, to take into consideration
that marks sharing the first fanciful
part and presenting a degree (even not
high) of similarity in their remaining
component are generally considered
to be similar; and that, in order to
differentiate a mark from a prior
similar word or word-and-device
mark, it is crucial to consider a very
original and dominant device
component. Last but not least, the
conceptual difference between the
marks, when at least one of the signs
is formed by a word endowed of a
clear and specific meaning in Italian,
would seem to play a decisive role in
the assessment of the similarity
between the marks, even
counteracting possible aural and visual
similarities. However future rulings
better clarifying what our opposition
case law will deem as clear and
specific meaning of a word are
awaited.
The above conclusions are deduced by
the analysis of statistics and a few
decisions taken into consideration.
However it is too early to assess the
real attitude of the Office and in
particular of the Board of Appeal and
it is necessary to continue to monitor
the rulings in order to obtain a clearer
picture of the situation.
10
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