Donatella Prandin and Simone Verducci Galletti of Bugnion look back on two years of a new opposition system, and identify some resulting trends
This article first appeared in Managing Intellectual Property Europe IP Focus 2013
Quickening the pace
If the IPTO was formerly known across the world for taking three to four years to grant trade marks and renewals, now trade mark applications are published in a few short months and, in the absence of opposition, certificates of registration are issued in one year to eighteen months.
The office now also confirms renewal in just a few weeks, issuing the necessary certificate almost immediately. Unfortunately, the legacy of the past lingers on and applications for renewals of Italian trade marks are still issued new filing and registration numbers. This means that owners of Italian trade marks need be particularly careful with regard to the renewal of their trade marks, updating the numbers for a current title every decade.
Although bureaucracy – an endemic disease in this country – is still a problem, the proce-dures for recordals have been greatly simplified, with less need for notarial authentication and legalisation than in the past.
However, the purpose of this article is to mark the Italian opposition system’s second anniversary, and it seems appropriate to start with some figures. To date, more than 2400 oppositions have been filed against applications for Italian trade marks (and international trade marks designating Italy). A good number of these oppositions have reached a negotiated settlement, while many others are pending a decision and quite probably a cooling-off period, which, as we shall see, is part of the procedure.
A small number of cases (fewer than 40) have already been decided, allowing some trends to be identified in the otherwise uncharted territory of the IPTO practice (although obviously IPTO examiners draw heavily on the case law of the OHIM, the Court of Justice of the EU – CJEU – and the Italian Courts).
Rules and procedures
Before examining these decisions, we shall make some brief comments on the rules of procedure, which closely follow Community procedure, al-lowing three months to file opposition from the date of publication in the Italian Trademark Bulletin (published online once a month).
Opposition may be filed not only by owners of earlier trade marks but also on the right of name and portrait. As said, a two month cooling-off period (extendable to 12 months) is pro-vided to allow a possible settlement to be reached, as is the opportunity to demand proof of prior use in oppositions involving opposing trade marks registered more than five years before the date of publication of the opposed trade mark.
Opposition may also be filed against international trade marks designating Italy. In such cases, publication in the Gazzette Mondiale de la proprieté intellectuelle de marques internationales replaces publication in the Italian Trademark Bulletin, with the first day of the month following such publication marking commencement of the term for filing opposition.
Once opposition is filed, the office assigns an opposition number, notifies the parties, and sets a period of two months for the settlement of the dispute (which can be extended for up to a maximum of one year).
Following this period, the opponent has two months within which to file pleadings followed by a period of a further two months allowing the proprietor of the trade mark to request proof of use or file pleadings.
Once exchange of written pleadings has taken place, the case can be decided. In theory, according to the IP Code and Implementing Regulation, a decision should be issued within two years from the date of filing of the opposition, but the term is not binding and it remains to be seen if the IPTO will be able to meet it in all cases.
Communication with the Office in the opposition proceedings is revolutionary by the standards of Italian bureaucracy, since the IPTO has allowed use of certified email. Notice of opposition, including evidence of rights, power of attorney (obligatory) and proof of payment of fees (€250 + €34, that is $329 + $45) should be sent to the Office within three months of the publication in the Trademark Bulletin in a single electronic folder attached to the certified email. The IPTO then replies, issuing the application number and proceeding to subsequent notifications by email.
It should be stressed that opposition cannot be based on reputations of earlier trade marks, unregistered trade marks (which have their own specific status in Italy), company names, or designations of origin.
In order to enforce such rights against a later trade mark, the owners will still need to go through the courts, applying for a declaration of invalidity.
There is already clearly established IPTO precedent where exchange of writ is concerned. There is, however, no indication regarding its evaluation of the evidence of use, since to date (as we will see) there have been no decisions involving evaluation of applications for evidence of use.
The format of decisions issued to date, despite some differences between examiners, is modelled very closely on OHIM formats. It is too early to express a real opinion regarding content, however there are early indications that we can try to summarise in our (hardly exhaustive) overview of the decisions below.
The first IPTO decision, issued on October 9 2012, gave no cause for surprise, since the brand Blumarine was considered similar to Bluemare in class 25. The same can be said of
the following case (decision 2/2013), where the Amalfi perfume trade mark was considered similar to the Acqua di Amalfi trade mark for perfumes.
Less obvious decisions saw the figurative trade mark considered similar to the complex trademark and device (February 6 2013).
In that decision, the IPTO confirmed that ‘when a sign is made up of word and figurative elements, the word element is what attracts the attention of consumers, and they will therefore refer to the sign using that word element’. This idea recurs in many of the decisions examined, including the Champion/Campione Collection decision, which found partially in favour of the opponent due to similarity between class 25 and class 18 products, with the exception of leather raw materials and their imitations.
In two decisions relating to the trade marks (opposing mark) against, the office, however, opted for a mainly graphical evaluation of the special script of, concluding that the signs did differ (also based on the presumed ignorance on the part of the relevant public of the meaning of the English words).
Decision number 21/2013 came as something of a surprise and ran counter to the principle stated in the Celia Champions decisions. The office considered that there was likelihood of con-fusion between a trade mark consisting of a stylised flower and the words Viparis Venues in Paris with a trade mark application for a different style of flower without a name element.
The examiner gave the following explanation for the approach adopted: ‘in the earlier trade mark the stylisation of the flower is relatively large and was therefore more noticeable than the word elements below it as the dominant element of the trade mark. Even if it is generally believed that the word element attracts the most attention in complex trade marks, in this case the figurative element is the distinctive element’.
In this regard, the decision on SPIKE/ seems more in line with established case law, since it once again attributes dominant value to the word element (ruling that there was similarity) and denying the distinctive capacity of ‘a yellow star containing a ragdoll with green hair, a red sash, a sky blue face, white eyes, dark blue arms, body’, noticeable for very obvious reasons.
On the question of trade marks with figurative elements, it is worth noting a decision com-paring the Pirelli figurative trade mark with the trade mark . The decision, probably one of the most well-known to date, discussed the grounds for refusal of trade marks based on reputation and renown (invoked by the opponent), which were not however admissible in opposition proceedings, nor for that matter considered relevant, from the explanation given by the examiners, since the degree of distinctiveness of the trade mark is not even mentioned in the decision.
On the distinctiveness acquired by a trade mark on the market, the Office seems very strict, with very little allowance for even the most basic of assumptions: the parties are required to demonstrate every instance of alleged special distinctiveness. The Corvo/The corvino decision runs counter to this trend, since it accepted as sufficient evidence of the distinctiveness of the Corvo trade mark (for wines) a Wikipedia article on the history (going back more than century) of the winery that owns the trade mark opposed.
With regard to name trade marks, the decision regarding the Mixa/Mixa3 Fitair trade marks – deemed to be similar – was based on another relatively common (in OHIM case law) principle: ‘consumers generally tend to focus their attention on the first element of a sign when they see a trade mark … in fact the public reads from left to right’.
Similar reasoning emerges in the Talula Ba-baton/Talullah decision, in which the Office also raised a very interesting question in arguing that ‘given the strong similarity of the initial part of the sign,… the next part of the Babaton sign could be perceived as distinguishing a particular line of the applicant’s products’. On this basis, Talula Babaton was considered similar to Talullah in class 25 and partially in class 18.
Another interesting aspect of this decision has to do with Italy’s current rules on the value of the class headings of the Nice Classification, which according to the Implementing Regulation of the IP Code should be understood as including the entire contents of the class. This principle will have to be modified to a degree since the IPTO has followed other offices in making access to the overall coverage provided by a given class a more complex matter, issuing a relevant communication, following the known high profile IP Tranlsator decision.
For the decision on the Ventilo/Ventico trade marks (considered to be similar), the IPTO relied on another increasingly popular general principle at Community level, which argues that ‘assessment of the likelihood of confusion implies some interdependence between the relevant factors and in particular a similarity between the marks and between these goods or services. A lesser degree of similarity between the goods may be offset by a greater degree of similarities between the marks and vice versa’. In this case, the products were identical and the IPTO concluded that there was likelihood of confusion. It should be noted that in this case, however, that the IPTO ruled out confusion of class 35 sales services with class 25.
In the Basile/Antonio Basile case, the IPTO ruled that there was similarity between the signs. It confirmed the general approach at Community level that concedes greater importance to sur-names over first names, since the relevant public generally attributes greater distinctiveness to the surname than the forename, as the latter usually indicates origin.
The Lastminute/Lastminuteclick decision, which rejected the opposition, was more unusual. The opponent’s trade mark, Lastminute, was not registered for travel arrangement services, and it was considered that there was no likelihood of confusion with the trade mark Lastminuteclick, which had been filed for this class of services. Although this in itself is not surprising, the examiner’s comment is interesting: ‘Lastminute appears to be devoid of distinctiveness with reference to all those services that the user can take advantage of up until the very last possible moment, so it follows that likelihood of confusion would also have to be ruled out since the expression Lastminute would not have seemed distinctive even for temporary accommodation services.’
This line of reasoning would have resulted in a different outcome on likelihood of confusion in the Festivalfilosofia/Festival of Philosophy of Magna Grecia case for class 41 services. Indeed, the IPTO judged the trade marks to be confusable.
Following in OHIM’s footsteps
In short, the IPTO seems to be headed in the right direction and, with the exception of a handful of cases, the system seems effective, with most decisions following the (successful?) precedent of the OHIM. Over the last three to four years, the IPTO has undoubtedly reduced the gap separating it from other trade mark offices.