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A weak trademark and the assessment of the likelihood of confusion

Civil Supreme Court, Section I, Judgement no. 8942 of 14 May 2020. Pres. Genovese. Est. Falabella

date: 07.06.2020
Area: Intellectual Property

The Supreme Court ruled in a dispute between two companies, both operating in the transport and forwarding sector, concerning the use of their respective distinctive signs. In the present case, the courts of first and second instance had classified the trademark registered by the applicant company as a weak trademark and had, therefore, held that the later trademark owned by the defendant could not be regarded as invalid on the grounds of likelihood of confusion, since slight differences from the earlier sign were sufficient to rule out confusion.

With the judgment in question, the Supreme Court confirmed this approach, denying the existence of a likelihood of confusion between the two trademarks, given the presence of elements of differentiation and novelty in the second trademark with respect to the first. The Court took the opportunity to reiterate the principle that the qualification as a weak trademark does not affect the aptitude of the trademark itself for registration, but only the intensity of the protection: this means that, in the presence of a weak trademark, confusion with another subsequent trademark (and, therefore, invalidity of the latter) is to be excluded if it presents even slight modifications or additions. It is certainly true, as the Court points out, that the qualification as a weak trademark does not preclude protection against infringement in the case of mere formal variants; however, since in the present case, several elements of differentiation between the two signs were highlighted, this was considered sufficient to exclude confusion.

The Court also rejected the appellant’s plea alleging infringement or misapplication of Article 20 of the Code of Criminal Procedure on the grounds that the judgment under appeal failed to take account of the identity of the services offered by the two companies in question, which allegedly increased the likelihood of confusion between the marks. In fact, Article 20 was correctly applied, since it penalises precisely the use of ‘a sign identical or similar to the registered trade mark, for identical or similar goods or services, if, because of the identity or similarity between the signs and the identity or similarity of the goods or services, there is a likelihood of confusion on the part of the public’.

Finally, the Supreme Court did not accept the reason why the court of second instance erred in considering that the relevant public was composed of specialised individuals, capable of making informed commercial choices and perceiving even the slightest differences between the two brands. In fact, despite the appellant’s request that the average consumer, endowed with medium diligence and prudence, should be taken as a reference, the Court stated that ‘for the purposes of assessing the distinctive capacity of the signs used by the entrepreneur to mark his goods and services, so as to enable their origin to be immediately identified and to differentiate them from those of other competitors, it is necessary to refer to the perceptive capacity not of the public in general, but of those particular categories of subjects for whom the products are intended, whose faculties of discernment must be related to the critical capacity of an average intelligent recipient, shrewd and informed about the products of the type to which they belong“.

A weak trademark and the assessment of the likelihood of confusion

Civil Supreme Court, Section I, Judgement no. 8942 of 14 May 2020. Pres. Genovese. Est. Falabella

date: 07.06.2020
Area: Intellectual Property

The Supreme Court ruled in a dispute between two companies, both operating in the transport and forwarding sector, concerning the use of their respective distinctive signs. In the present case, the courts of first and second instance had classified the trademark registered by the applicant company as a weak trademark and had, therefore, held that the later trademark owned by the defendant could not be regarded as invalid on the grounds of likelihood of confusion, since slight differences from the earlier sign were sufficient to rule out confusion.

With the judgment in question, the Supreme Court confirmed this approach, denying the existence of a likelihood of confusion between the two trademarks, given the presence of elements of differentiation and novelty in the second trademark with respect to the first. The Court took the opportunity to reiterate the principle that the qualification as a weak trademark does not affect the aptitude of the trademark itself for registration, but only the intensity of the protection: this means that, in the presence of a weak trademark, confusion with another subsequent trademark (and, therefore, invalidity of the latter) is to be excluded if it presents even slight modifications or additions. It is certainly true, as the Court points out, that the qualification as a weak trademark does not preclude protection against infringement in the case of mere formal variants; however, since in the present case, several elements of differentiation between the two signs were highlighted, this was considered sufficient to exclude confusion.

The Court also rejected the appellant’s plea alleging infringement or misapplication of Article 20 of the Code of Criminal Procedure on the grounds that the judgment under appeal failed to take account of the identity of the services offered by the two companies in question, which allegedly increased the likelihood of confusion between the marks. In fact, Article 20 was correctly applied, since it penalises precisely the use of ‘a sign identical or similar to the registered trade mark, for identical or similar goods or services, if, because of the identity or similarity between the signs and the identity or similarity of the goods or services, there is a likelihood of confusion on the part of the public’.

Finally, the Supreme Court did not accept the reason why the court of second instance erred in considering that the relevant public was composed of specialised individuals, capable of making informed commercial choices and perceiving even the slightest differences between the two brands. In fact, despite the appellant’s request that the average consumer, endowed with medium diligence and prudence, should be taken as a reference, the Court stated that ‘for the purposes of assessing the distinctive capacity of the signs used by the entrepreneur to mark his goods and services, so as to enable their origin to be immediately identified and to differentiate them from those of other competitors, it is necessary to refer to the perceptive capacity not of the public in general, but of those particular categories of subjects for whom the products are intended, whose faculties of discernment must be related to the critical capacity of an average intelligent recipient, shrewd and informed about the products of the type to which they belong“.