This article first appeared in World Intellectual Property Review, published by Newton Media Ltd.
One of an attorney’s favourite things is a good Supreme Court judgment that sums up the most important issues regarding a specific matter and sets the record straight for future decisions of lower courts and administrative authorities. This is even more true when it comes to case law-driven fields, such as trademark law.
The Italian Supreme Court (Corte di Cassazione) recently gifted Italian practitioners with a truly nomophylactic judgment (one that upholds or protects the law, especially its uniform interpretation) in a case regarding the trademark of the digestive liqueur Fernet Branca (case no. 11031 from May 27). This is a brief account that will be useful to foreign attorneys involved in Italian cases.
Likelihood of confusion
The court reaffirmed the principle of “global appreciation and synthesis”, ie, that the assessment of the risk of confusion must be “global” and it must consider the three main channels through which the trademark is perceived (visual, phonetic and conceptual). Additionally, the court recognised the principle of “interdependence”: a lesser degree of similarity between goods/services may be offset by a greater degree of similarity between the marks and vice versa.
The court set the bar for likelihood of confusion by placing a particular emphasis on the link between the signs. Therefore, even though the overall impression of the marks does not convey any likelihood of economic link between the respective owners, the court still found a likelihood of confusion possible.
Moreover, the court stressed the relevance of the average consumer’s “perception” of the signs. It emphasised that this is deeply influenced by the distinctive and dominant elements; however, it should be noted that the concept of “perception” is often flattened to a mere visual awareness of the signs, mostly by the Italian Patent and Trademark Office. Indeed, such a restrictive interpretation of the concept of “perception” as something essentially “visual” is becoming increasingly crucial in the office’s decisions and it often overtakes other factors that should be taken into account. It is therefore important that the Supreme Court has once again clarified that “perception” is a more nuanced notion that goes far beyond the visual assessment of the signs and involves all the “relevant factors”.
Beside the usual considerations regarding the level of attention of the relevant consumer, the court also applied the “perception” doctrine to the assessment of the level of attention of the consumer. In particular, the court stated that when the level of attention of the consumer is usually lower, the visual similarity of the signs tends to be more important than other factors.
Moreover, the kind of product and the peculiarities of the same should be identified in order to characterise the consumer of such a product. Once the kind of consumer has been identified, the judge must consider how the average person in that specific group would perceive the trademarks.
Distinctiveness of the mark
The court explained how the fame of a trademark may result in the average consumer being “well-trained” and accustomed to discern the famous trademark from non-original ones. Nevertheless, investments to obtain this “fame” must be protected, even if the risk of confusion with other trademarks is actually lower. In the end the court affirmed that, even if generally, the denominative part of a trademark is the one that must be primarily considered in the comparison, but there could be exceptions when the figurative part is distinctive.
Once again, the court drew attention to the importance of the figurative elements; in other words, it confirmed that the assessment of the likelihood of confusion should be based on all the elements and there should be no a priori pecking order between word and figurative elements. Indeed, each judgment must be made on a case-by-case basis.
Assessment of the likelihood of confusion should be as multifaceted as possible and it should be aimed at detecting at least a link between the signs, not only a visual similarity. Even though this judgment is not going to make history as it does not fiercely address any of the usual puncta dolentia (points of grievance), it is a perfect and very useful review of the most common principles.