9 August 2016Jurisdiction reportsClaudio Balboni and Andrea Cappai

Italy: A perfect review of principles

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”.

Relevant public

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.

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