By decision, issued on February 17th, 2015, No. 3118, the Italian Court of Cassation, facing the long-standing issue concerning the confusion between similar signs, ruled on the counterfeiting of the figurative trademark “Valentino”, owned by Valentino S.p.A., by the figurative trademark “Giovanni Valentino”, owned by Florence Fashion Jersey Ltd. The above-mentioned signs marks same products and show similar figurative elements, as well as the name “Valentino”: the trademark owned by Valentino S.p.A. – registered since 1979 – is composed by a letter “V” placed in a “geometric figure”, while the counterfeiting sign – registered by the Florence Fashion in 1988 – is made up by a letter “V” placed in an oval forming a letter “G”. 

Click here to view images.

In the case in point, Valentino S.p.A. sued Florence Fashion Jersey Ltd. in order to achieve the declaration of invalidity of the trademark “Giovanni Valentino”, in light of the lack of novelty. According to what reported by the well-known fashion house, the two trademarks could have created confusion at the clients’ eyes due to (i) the similarity of their differentiating signs, both being fantasy and marking products belonging to same categories, (ii) the same trademarks’ ideological and conceptual significant core, which is unique and composed by the “V” letter (Mr. Valentino initial), drawn in almost identical style.

Furthermore, Valentino S.p.A., despite the huge gap between the two designers’ fame, claimed that the similarity between the above-mentioned trademarks was such as to mislead the public that the letter "V" coupled with the letter “G” could refer to, in any case, the initials of the designer Valentino Garavani. Notwithstanding that the counterfeited trademark had been defined as “strong”, because of being fancy, by the trial judges - the inferior Court and at the Court of Appeal - the Court of Cassation confirmed the non-confusion between the trademarks in question.

According to the Supreme Court, a consequent trademark counterfeits a “strong” trademark, not only if the variances or modifications are relevant, but also when they are not significant, only if there is appropriation of the identity or of the ideological significant core, which typify the attitude of the counterfeited trademark. In other words, whether, following variances and modifications, the ideological significant core of the original trademark remains “untouched” (i.e. not confused with the second one), the protection right on the first mark will cease, as it is not allowed for a company owning a specific trademark (even it is “strong”) to prohibit another company from using a trademark which is similar but which does not create confusion, if the distinctiveness of its products from those of the other firm remains unchanged.

In this specific case, the Supreme Court, by applying the above mentioned principle, ruled that the trademark registered by Fashion Jersey Ltd is characterised by a diverse composition which makes it completely different from the logo of the suing company and, therefore, distinguishable not only based on an analytical assessment but also, and above all, based on a holistic and synthetic assessment, in consideration of all the main graphic and visual elements as well as of the average perceptive ability of the standard consumer, which, in the case of luxury products, is more accurately selected and checked.