On 29 August 2014 Division 3 of the Federal Court of Appeals in Civil and Commercial Matters, in re “Piero S.A.I.C. et al v. Demibell S.A.C.I.F. e I. et al”, decided that the trademarks “PIERO CUORE” (applied for in Class 20) and different variations of “CAROCUORE” (opponent, registered in various classes), were not confusingly similar.
The plaintiff, Piero S.A.I.C. (Piero), is a well-known company engaged in the manufacture and sale of mattresses, pillows and beds. Here the plaintiff sued to dismiss the opposition against its application for the registration trademark “PIERO CUORE” in Class 20, opposed by the defendant Demibell S.A.C.I.F. e I. (Demibell) on the grounds of likelihood of confusion with its trademarks “CARO CUORE RAGAZZA” (Class 20), “CARO CUORE” (Class 24), “CUORE” (Class 25), “CAROCUORE” (Class 25) and “MIO CUORE” (Class 25).
The judge of first instance granted the claim, holding that there was no likelihood of confusion between the marks in Classes 20, 24 and 25 because they covered different products. With regard to trademarks “PIERO CUORE” and “CAROCUORE RAGAZZA” both in Class 20, he held that the marks themselves were not confusingly similar, in the light of the general principles for performing the conceptual comparison, and the fact that both firms were widely known in the market.
The defendant appealed from that decision, but the Court of Appeals confirmed the ruling.
To reach such a decision, the judges of the Division 3 conducted the comparison on the conceptual level, in Italian. They interpreted that the comparison cast substantial conceptual differences between the terms “heart” (cuore) and “dear/loved heart of a girl” (caro cuore ragazza). Also, similarly to the judge of first instance, they interpreted that the mots vedette of both signs were clearly reminiscent of the brands of each of the parties (“PIERO” and “CAROCUORE”) in their respective fields (mattresses, pillows and beds, on one side, and feminine intimate and sports apparel, on the other), triggering an immediate association with each firm.
Thus, the Court of Appeals escaped the widespread misconception that, when assessing the likelihood of confusion of words in a foreign language, they lack conceptual content, or are considered just fantasy words, therefore having to undergo an “opacity test”, distinguishing if the average consumer manages or not to perceive the meaning of the foreign word.
This article is intended to provide readers with basic information concerning issues of general interest. It does not purport to be comprehensive or to render legal advice. For advice about particular facts and legal issues, the reader should consult legal counsel.