In a decision published in August 2015, the second Division of the Italian Patent and Trademark Office (UIBM) upheld the opposition filed by Riva S.p.A., a historic Italian company active in the field of luxury yachting, against the application for the Italian figurative trademark “Diva Yachts”, filed in 2012 by a Chinese competitor.
Opposed trademark One of the conflicting opponent’s national trademarks
In support of the opposition, Riva invoked four earlier, allegedly similar, figurative trademarks (three national trademarks and one Community trademark), registered between 1964 and 2001, inter alia, for the same goods that the “Diva Yachts” trademark would have covered: vehicles, apparatus for locomotion by land, air or water.
The opponent claimed that the opposed trademark lacked novelty on the grounds that, in addition to referring to goods identical to those covered by its earlier trademarks, it presented both the particular font and three of the four letters composing the characterising element “Riva”, which is at the heart of all the four trademarks invoked. The significant similarity between the signs and the identity of the goods they covered would therefore generate a likelihood of confusion and association about the origin of the goods on the relevant public. The applicant, in contrast, did not reply.
On the merits, the Office, having verified the identity of the goods covered by the trademarks at issue, compared the opposed trademark application with Riva’s earlier signs – particularly the one reproduced above – from a visual, aural and conceptual point of view, concluding that: i) the similar font, the common presence of the three letters “I-V-A”, the presence of the identical word “Yachts” placed in the same position and the graphic similarity between the two respective initials “D” and “R” (both written in capital letters) make the signs at issue visually similar, despite the (irrelevant) differences between them; ii) the sound of the common letters and words already considered in the visual comparison makes the signs similar also from an aural point of view; iii) the signs are also conceptually very similar, since the words “Grand” and “Diva”, in combination with the common word “Yachts”, although different, both allude to the high quality of the boats produced.
In assessing the likelihood of confusion on the public, the Office, on one hand, considered that in this case the degree of attention of the relevant public to the trademarks must be regarded as higher than the average consumer’s – since the signs at issue distinguish very expensive goods, so that professional assistance is often requested by the purchaser – which decreases the likelihood of confusion; on the other hand, however, it allowed a certain distinctive strength to the earlier trademarks, since their core, consisting of the word “Riva”, is highly distinctive. The word “Riva”, in fact, does not possess any descriptive connection to the goods that the trademarks cover and is, furthermore, a patronymic (which according to well-established case-law is capable of making a trademark highly distinctive). Such strong distinctiveness of the enforced trademarks, according to the Office, may generate a likelihood of confusion with a later trademark even when the degree of similarity between the signs is medium-low.
In light of the above, as well as in accordance with the well-established principle that “a lesser degree of similarity among the goods or services may be counterbalanced by a greater degree of similarity among the trademarks“, the Office found that in the case at issue, despite the fact that the signs were related to goods aimed at consumers with a higher-than-average level of attention, the similarities among them do not rule out the likelihood of confusion, or the likelihood of association; thus it upheld the opposition and therefore rejected the application for the opposed trademark.