In Jägermeister v Zwack (Decision 1249/2013 of January 18 2013, published recently) the Supreme Court ruled that for a composite mark consisting of two autonomously distinctive elements, the imitation of one element amounts to an imitation of the trademark as a whole.

The First Civil Division of the Supreme Court recognised the risk of confusion between the composite marks of appellant Mast Jägermeister AG and appellee Zwack Unicum (previously owned by Budapesti Likoripari KFT)

The Supreme Court reversed the decisions of both the Court of First Instance and the Rome Court of Appeal, finding that all of the distinctive elements contained in composite trademarks should be examined, both denominative and figurative, in order to assess their similarity and the risk of confusion.

The Supreme Court determined that in Jägermeister’s composite mark, the device element (ie, the “head of a deer with a cross between horns”) and the word element JÄGERMEISTER should have been considered separately when evaluating the risk of confusion. The Supreme Court noted that in fact, those elements have autonomous distinctive character.

In contrast, the appellate judges, despite having first recognised Jägermeister’s trademark as “strong”, mistakenly concluded that the similarities between the figurative elements alone were not sufficient since the word elements were quite different. The appeal court had determined that the different denominative elements in the marks under comparison – JÄGERMEISTER and HUBERTUS – were sufficient to exclude the risk of confusion, upholding this aspect of the first-instance decision.

Thus, the appeal court decided the issue of risk of confusion on the basis of an overall assessment of the trademarks. However, in reality it considered the word elements as predominant and, judging them to be different, concluded that the two trademarks were not confusingly similar.

In overruling the second-instance decision, the Supreme Court distinguished between two types of composite mark.

The first (marchio complesso) includes various elements – either denominative or figurative – each of which would have autonomously distinctive character even if considered alone. The second (marchio di insieme) includes various elements, each devoid of distinctive character if considered alone. The distinctiveness of this second type of composite trademark is determined only by the combination of all the elements.

According to the Supreme Court, the assessment of similarity and risk of confusion must be conducted differently for the two different types of composite mark.

In the first case it is necessary to conduct a specific examination of each element. One or more elements would constitute the 'heart' of the trademark. If such elements, considered apart from the trademark as a whole, are imitated in a confusingly similar way, there is a risk of confusion between the two trademarks.

In the second case, only an overall assessment of all the elements characterising the marks should be used to establish whether the later mark infringes the earlier one.

The case submitted to the Supreme Court involved the issue of so-called 'complex' trademarks, which are marks composed of various elements, each having autonomous distinctive character in connection with the relevant products (ie, spirits and alcoholic beverages). The court found that both the deer device and the word mark would be distinctive on their own, even if they were the only elements of a trademark. As a consequence, imitation of one element is enough to conclude that the trademark has been imitated and that there is a risk of confusion.

The Supreme Court vacated the appealed decision and remanded the case to the Rome Court of Appeal for further consideration. A new decision by the appeal court should now apply the principles as enunciated by the Supreme Court.

This decision is favourable to trademark owners that have focused their protection strategies on trademarks consisting of more than one element, each being sufficiently distinctive.

Stella Padovani

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.