Opposition proceedings in Italy are limited in order to exclude protection of extremely well-known trademarks beyond the concept of likelihood of confusion, but there are avenues open to trademark owners

This article first appeared in World Trademark Review magazine issue 49, published by The IP Media Group. To view the issue in full, please go to www.worldtrademarkreview.com.

One of the most frequently discussed deficiencies of the Italian trademark opposition system – which has otherwise been operating smoothly since July 2011 – is that it has such limited bases for opposing trademark registrations. In particular, it does not provide for cross-class challenges, which are typically associated with claims of unfair advantage and/or prejudice to an earlier trademark’s reputation.

The Industrial Property Code allows for oppositions to be based on:
•    the identity of trademarks and goods/ services;
•    the likelihood of confusion resulting from the similarity of the trademarks and the goods/services; and
•    the right to personal portraits, personal names and well-known signs.

This effectively precludes owners of well-known marks from using administrative opposition proceedings to claim likelihood of confusion when challenging subsequent similar marks for goods and services that are not sufficiently similar to those covered by their initial registration.

The reason for excluding such claims is believed to lie in the legislature’s intention that the Italian Patent and Trademark Office (IPTO) should deal only with cases involving the review of documents that are simple and reliable and provide evident data (eg, application or registration certificates). This would exempt it from having to review and decide cases involving more complex evidence (eg, depositions), which the legislature feels should be addressed more appropriately by the courts.

Likelihood of confusion
It is well established that likelihood of confusion should be determined not by applying an analytical examination of the marks, but rather through an overall assessment of the signs – taking into account the graphical and visual elements that make the mark distinctive and considering the stronger and weaker characteristics of the examined marks (Supreme Court Judgment 6193/08).

Therefore, the Opposition Division is bound to analyse a trademark’s distinctiveness when assessing likelihood of confusion. For the purposes of that assessment, it is irrelevant whether distinctiveness is inherent or acquired. Since distinctiveness is a prerequisite to reputation, it follows that a claim to reputation should not be ignored by the Opposition Division. If reputation is confirmed, this will influence the decision – albeit within the limits of an assessment of likelihood of confusion.

As a result, while reference to reputation is not specifically cited among the possible bases for opposing a subsequent mark, it is an element that determines distinctiveness and cannot be ignored by the Opposition Division, provided that is appropriately supported by evidence other than trademark application or registration certificates.

This principle was applied by the IPTO in Opposition 437/2011 and confirmed in appeal proceedings by the Italian Commissione dei Ricorsi (the Italian equivalent of the Office for Harmonisation in the Internal Market’s Boards of Appeal) on December 16 2013 (USA Bossert International Development Co, Ltd v IPTO, Case 06/14). The case involved the trademarks BOSS and BOSSERT.

Hugo Boss Trademark GmbH & Co opposed an Italian trademark application for BOSSERT in Class 25 on the basis of its earlier trademark registrations for BOSS in Class 25 (Opposition 437/2011). Hugo Boss argued that the marks were confusingly similar, and that the extensive reputation enjoyed by its trademark increased that likelihood of confusion. Evidence of reputation consisted of decisions issued by Italian courts for goods in Class 25 and others.

The Opposition Division remarked that it was not bound by court decisions with regard to the high degree of reputation enjoyed by the BOSS trademark across a broad spectrum of goods, insofar as the opposition provisions do not contemplate the protection of well-known marks as such. However, the issue of reputation was considered relevant to the extent that it influenced the assessment of the earlier mark’s distinctive character – an issue that the Opposition Division was bound to determine. The opposition was upheld and then appealed by the applicant, which challenged the finding of similarity between the marks and the fact that the IPTO had referred to the issue of reputation as being pertinent, albeit restricted to the assessment of distinctiveness.

In the appeal proceedings, the Commissione dei Ricorsi stated that reputation of a trademark necessarily influences the assessment of likelihood of confusion, as it may well increase the perceived degree of similarity between two signs. The proven degree of reputation enjoyed by the BOSS trademark would be a likely cause for consumers to associate the BOSSERT mark with the well-known BOSS mark and perhaps to believe that this was a new version of the BOSS mark. Therefore, where the earlier mark enjoys a high degree of reputation, the likelihood of confusion is enhanced and the trademarks’ distinctiveness must be assessed more strictly.

The requirement to submit evidentiary material in support of reputation was discussed in Opposition 123/2011, Dr Iing HCF Porsche Aktiengesellschaft v Pratesi Adriano, which dealt with the trademarks 911 and 911 NOVECENTOUNDICI. In these proceedings Porsche Aktiengesellschaft claimed that its 911 mark enjoyed worldwide reputation, but failed to provide any evidence to support that statement. The opposition was upheld, but the examiner clarified that the decision was based on the allegedly well-known mark 911 having a normal degree of distinctiveness, based only on an inherent evaluation of its characteristics. Therefore, where oppositions are based on trademarks that enjoy a high degree of reputation (which must be claimed and proven by documentary evidence during the proceedings), the distinctive character of the well-known sign may be protected more strictly. However, reputation must be proven during the proceedings through reference to reliable and unbiased sources. Only limited weight will be given to general and vague statements asserting reputation.

Rights to personal portraits, personal names and well-known signs
Oppositions may also be based on an alleged violation of the right to a personal image or name, and famous signs (Article 8 of the Industrial Property Code). Having regard to famous signs in particular (Article 8.3), the provision states that these may be registered as trademarks only by the rights holder with his or her consent or, after death, with the consent of the rights holder’s heirs. ‘Famous signs’ are described as personal names, signs used in the fields of art, literature, science, politics or sports, the names and acronyms of events and those of bodies and associations that do not have an economic purposes, as well as the characteristic emblems of the latter.

The provision is designed to reserve commercial exploitation of the famous sign to the rightful owner. Any commercial benefits to third parties that may derive from using a sign that is identical or confusingly similar to a famous name is illegal if it involves exploiting the famous sign’s power of attraction, reputation and prestige.

In this context, famous signs are considered to fall within a special category of protected names and are safeguarded against so-called ‘free riders’, regardless of whether the nature of the goods and services involved has any bearing on those covered by the famous sign. This principle is in line with protection offered against commercial parasitism and public deception – the intention being to maintain the sign’s value as a communication tool.

Where appropriate, the intended  protection offered under this provision is similar to that offered to a well-known or famous trademark which, as mentioned, is not allowed as a ground of opposition in Italy.

In order to benefit from Article 8.3 in opposition proceedings, the owner of the famous sign will have to prove its entitlement to the name, that the name is indeed well known as a personal name or as a sign in the fields mentioned above, and that the applicant has not been authorised. Interestingly, the provision does not require a showing of likelihood of confusion, association or undue exploitation of the famous sign.

Successful use of this provision was made in Opposition 119/2011, TMS Entertainment LTD v Black srl. TMS Entertainment opposed an application for LUPIN III in respect of vehicles, land, air and water transport apparatus in Class 12. The opposition was based on the opponent’s earlier registration for the same trademark in Classes 9, 16, 25, 28 and 30 and on the reputation it enjoyed over the same name in the field of literature and arts, particularly with regard to comics and cartoons. LUPIN III is a Japanese manga, whose cartoon and comic publications were hugely successful in Italy during the 1980s.

The IPTO was satisfied that the opponent proved its ownership of the name LUPIN III through copies of trademark registration certificates, a merchandising contract, copies of LUPIN III DVDs bearing the TMS Entertainment name, web pages showing the opponent’s name as authorised licensee of the trademark in Japan and a copy of a power of attorney ad litem signed by TMS Entertainment and legalised by the Italian consulate in Tokyo for the purpose of defending the name LUPIN III in court.

The well-known nature of the LUPIN III name in Italy was demonstrated by evidence of television broadcast services and DVD sales throughout Italy as recently as 2011.

With regard to the lack of consent, the opponent could show that Black Srl had approached it to discuss a possible agreement to use the name LUPIN III for car accessory products, which the opponent denied.
The IPTO regarded these documents and evidence sufficient to justify the application of Article 8.3 of the Industrial Property Code and refused Black Srl’s trademark application without the need to review a second ground for opposition (which was the trademark registrations in different classes, which would have likely failed).

Article 8.3 is designed to protect famous names and signs against unauthorised exploitation. Its scope is potentially vast and requires no showing of a likelihood of confusion or undue exploitation. Even though it requires a larger scope of evidence than trademark opposition proceedings, the burden does not appear unreasonable.

In conclusion, while the provisions regulating opposition proceedings in Italy are clearly limited in order to exclude protection of extremely well-known trademarks beyond the concept of likelihood of confusion, the fact that reputation is assessed to determine the distinctiveness of the trademark can help to defend within the ambit of likelihood of confusion. Conversely, Article 8 may afford some famous names and signs a reasonable degree of protection outside the boundaries of likelihood of confusion, although here the evidentiary burden may be heavier.


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