This article first appeared on WTR Daily, part of World Trademark Review, in (November/2014). For further information, please go to www.worldtrademarkreview.com
The notion, already consolidated at Community level, that marks belonging to a ‘family’ or ‘series’ of marks benefit from extended protection has recently been recognised by the Italian Opposition Division.
In September 2014 the Opposition Division issued Decision No 128/2014 in opposition proceedings No 56/2012, which recognised that the trademarks owned by the opponent – over 15 marks characterised by the prefix ‘pedia’ followed by a suffix of three or four letters, registered for pharmaceutical products and, in particular, dietary supplements for paediatric use – benefited from the protection afforded to a family or series of marks.
The abovementioned prefix was considered to be able to distinguish the origin and provenance of the opponent’s products, since it had been used systematically in all its trademarks – always in the first part of the sign and in conjunction with secondary elements.
In particular, the examiner found that there was a “medium/low” level of similarity between the marks under comparison, which both covered pharmaceutical products; the marks shared only the prefix ‘pedia’ and differed completely in their second part. However, the examiner stated that, if that low level of similarity was considered in connection with the family marks owned by the opponent, it could generate a likelihood of association among the relevant public – that is, the relevant public could believe that the goods bearing the marks came from the same undertaking or from economically or commercially linked undertakings, even if it did not directly confuse the marks.
Consequently, the creation of a family of marks could be an important competitive advantage for entrepreneurs – when choosing their ‘naming strategy’, they could decide to capitalise on, and invest in, a central element that identifies and characterises all the trademarks belonging to the family, in order to make it protectable and enforceable against any variation of the marks by third parties.
Recognised at both the Italian and Community levels, the concept of a ‘family of marks’ could therefore be used as a legal tool to extend the protection of marks belonging to the same family or series, in the same manner as the concept of ‘defensive marks’ (a legal concept that may be found only in Italian law, whose premise and characteristics differ from those on which the concept of a ‘family of marks’ is based, but which also has the effect of extending the scope of protection of the principal mark).
In this regard, however, it must be stressed that, while one of the relevant characteristics of defensive marks is that they are not susceptible to revocation for non-use, one of the principal requirements to extend the protection afforded to a family or series of marks is that the owner must provide proof of use for all or a number of the marks.
Therefore, if an entrepreneur decides, as part of its naming strategy, to create a family of marks to characterise specific lines of products or services, it must bear in mind that, in order to benefit from the extended protection afforded to a family or series of marks, the following requirements apply:
- all the marks belonging to the family or series – or, at the very least, a number of marks capable of constituting the family or series – must be in use; and
- all the marks belonging to the family or series must have the same structure (eg, the common characteristic element must always be in the same position in relation to the secondary elements).
The owner of a family of marks could thus benefit from extended protection since it can enforce its family of marks against all subsequent third-party trademarks reproducing the same dominant element, even where the secondary elements vary or use different combinations.