In the matter in exam, both conflicting trademarks distinguished goods in class 16, printed materials, but in one case (the contested trademark) the product was a free daily newspaper in the matter of information and news distributed in public transport vehicles in big cities, while in the other case (earlier trademark), it was an advertising journal distributed by department stores.
The opinion of the owner of the contested trademark is that it should not be recognized any affinity between the goods in question, as the catalogue of a warehouse has not any functional autonomy with the distribution of the products.
As repeatedly recognized by the case law, the recognition of the affinity is not linked with the possible inclusion of the products in the same class of goods or services. The Court states that: “The survey about affinity investigates whether the goods in comparison are sought and bought by the public under the same or at least closely motivations, as such that functional similarity existing between those goods and their relative sectors leads the consumers to believe that they come from the same undertakings, regardless the possible identity of the marketing channels”.
Affinity between products and services Italian Corte di Cassazione no. 4386 of 2015
“The identity of the needs that lead to purchase similar products cannot be anchored to too general criteria (such as the need to dress, eat, read and so on), as the risk is to lose the nexus that, according to rules of common experience, we must assume that exists between the identity of the need which those goods are destined and the uniqueness of their source of origin, which is the real reason for the protection of the trademark”.
In this case, the judgment of affinity was to be conducted on one side between the catalogs, printed by the proprietor of the earlier mark, containing only the list of products sold in the stores of the holder, and on the other side the newspaper free of charge containing news and information on culture, sports, entertainment, politics and so on.
The Corte di Cassazione notes that the Court of Appeal (which recognized the affinity between the products) should have to better argue its conclusion because, on the contrary, it “did not analyze the relevant public of the two journals, one consisting by the consumers of commercial warehouse and the other consisting of the passengers of public transport. It does not appear to be analyzed the type of need the journals intend to meet and it is not located the difference between a specialized information, aimed at an audience of buyers of the products of the same company that publishes the magazine, and a generalist information with the purpose of daily information, albeit containing advertisements of various kind which, however, do not affect products sold by the publisher. Finally, are not carried out assessments on the prevalence of the informative function on the advertising function and on possible diversity among the public interested in daily news and public interested in the advertising of the products”.
When is it proven the reputation of a Reform European Union Trademark?
The judgement of the Court of Justice C-125/14 of 3 September 2015 gives an answer to some questions concerning when the reputation of a European Union Trademark can be considered as demonstrated.
The questions are:
- Is it possible to affirm the reputation of a European Union Trademark when it is demonstrated only in a single State or it is necessary that the evidence of the reputation necessarily involve more Countries of the European Union and, in the latter, how many and which?
- Is it possible to oppose a national trademark if you are owner of an earlier European Union Trademark with reputation but the reputation does not concern the State of the national mark that you want to oppose?
Notoriety European Union Trademark
First of all, with regard to the concept of “reputation”, “assumes a certain degree of knowledge amongst the relevant public, which must be considered to be reached when the European Union Trademark is known by a significant part of the public concerned by the products or services covered by that trademark” (C-125/14, paragraph 17).
The Court of Justice, besides, specifies that “in examining this condition, the national Court must take into consideration all the relevant facts of the case, in particular the market share held by the trademark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it” (C-125/14, paragraph 18).
Coming to the first question – whether the reputation can be proved even if existing in reference to a single Member State – the Court of Justice states that “the condition as to reputation must be considered to be fulfilled when the European Union Trademark has a reputation in a substantial part of the territory of the Community and such a part may, in some circumstances, correspond to the territory of a single Member State” (C-125/14, paragraph 19).
From the answer to the first question comes the answer to the second question, because “if the reputation of an earlier European Union Trademark is established in a substantial part of the territory of the European Union which may, in some circumstances, coincide with the territory of a single Member State…the proprietor of that mark is not required to produce evidence of that reputation in the Member State in which the application for registration of the later national mark, which is the subject of an opposition, has been filed”. (C-125/14, paragraph 20).
Notoriety European Union Trademark
Having seen that the reputation of a European Union Trademark may also cover a single Member State and that, if the reputation is demonstrated, it is not necessary that it also exists in the State in which the opposed trademark application was filed, we must clarify another point.
Article 4(3) of the Directive 2008/95/EC of the European Parliament of the Council of 22 October 2008, states that “A trademark shall furthermore not be registered …if it is to be, or has been, registered for goods or services which are not similar to those for which the earlier European Union Trademark is registered, where the earlier European Union Trademark has a reputation in the community and where the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier European Union Trademark”.
When you have proved the reputation of the Community trademark but that reputation does not involve the State in which the national trademark you want to oppose was filed, can we affirm that the proprietor of the national trademark would take unfair advantage of the reputation of the trademark if the well-known mark is not known in that State?
The Court of Justice says the following: “if the earlier Community trademark has already acquired a reputation in a substantial part of the European Union, but not with the relevant public in the Member State in which registration of the later national mark concerned by the opposition has been applied for, the proprietor of the Community trademark may benefit from the protection introduced by article 4(3) of Directive 2008/95 where it is shown that a commercially significant part of that public is familiar with that mark, makes a connection between it and the later national mark, and that there is, taking account of all the relevant factors in the case, either actual and present injury to its mark, for the purposes of that provision or, failing that, a serious risk that such injury may occur in the future”.
Classes Commodity Trade Marks and Patents
The purpose of a trademark is to identify their products and / or services distinct from those of the competition, so you must indicate during the registration of the trade mark the scope of use of the same.
At the international level, to allow classification of each individual product or service, we take as reference the Nice Agreement that from 1 January 2012 is updated to the 11th edition.
The product Classs trademarks of Nice divide the goods in Classs 1 to 34 and services in Classs 35 to 45. Each class is represented by a title that gives general information about their products or services.
At the time of application, the filing fee is inclusive of a class of goods, however, you can choose additional Classs in which esterendere protection by paying an additional fee.
- Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry;
- unprocessed artificial resins, unprocessed plastics;
- fire extinguishing and fire prevention compositions;
- tempering and soldering preparations;
- substances for tanning animal skins and hides;
- adhesives for use in industry;
- putties and other paste fillers;
- compost, manures, fertilizers;
- biological preparations for use in industry and science.
- Paints, varnishes, lacquers;
- preservatives against rust and against deterioration of wood;
- colorants, dyes;
- inks for printing, marking and engraving;
- raw natural resins;
- metals in foil and powder form for use in painting, decorating, printing and art.
- Non-medicated cosmetics and toiletry preparations;
- non-medicated dentifrices;
- perfumery, essential oils;
- bleaching preparations and other substances for laundry use;
- cleaning, polishing, scouring and abrasive preparations.
- Industrial oils and greases, wax;
- dust absorbing, wetting and binding compositions;
- fuels and illuminants;
- candles and wicks for lighting.
- Pharmaceuticals, medical and veterinary preparations;
- sanitary preparations for medical purposes;
- dietetic food and substances adapted for medical or veterinary use, food for babies;
- dietary supplements for humans and animals;
- plasters, materials for dressings;
- material for stopping teeth, dental wax;
- preparations for destroying vermin;
- fungicides, herbicides.
- Common metals and their alloys, ores;
- metal materials for building and construction;
- transportable buildings of metal;
- non-electric cables and wires of common metal;
- small items of metal hardware;
- metal containers for storage or transport;
- Machines, machine tools, power-operated tools;
- motors and engines, except for land vehicles;
- machine coupling and transmission components, except for land vehicles;
- agricultural implements, other than hand-operated hand tools;
- incubators for eggs;
- automatic vending machines.
- Hand tools and implements, hand-operated;
- side arms, except firearms;
- Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments;
- apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity;
- apparatus for recording, transmission or reproduction of sound or images;
- magnetic data carriers, recording discs;
- compact discs, DVDs and other digital recording media;
- mechanisms for coin-operated apparatus;
- cash registers, calculating machines, data processing equipment, computers;
- computer software;
- fire-extinguishing apparatus.
- Surgical, medical, dental and veterinary apparatus and instruments;
- artificial limbs, eyes and teeth;
- orthopaedic articles;
- suture materials;
- therapeutic and assistive devices adapted for the disabled;
- massage apparatus;
- apparatus, devices and articles for nursing infants;
- sexual activity apparatus, devices and articles.
- Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
- apparatus for locomotion by land, air or water.
- ammunition and projectiles;
- Precious metals and their alloys;
- jewellery, precious and semi-precious stones;
- horological and chronometric instruments.
- Musical instruments.
- Paper and cardboard;
- printed matter;
- bookbinding material;
- stationery and office requisites, except furniture;
- adhesives for stationery or household purposes;
- drawing materials and materials for artists;
- instructional and teaching materials;
- plastic sheets, films and bags for wrapping and packaging;
- printers’ type, printing blocks.
- Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials;
- plastics and resins in extruded form for use in manufacture;
- packing, stopping and insulating materials;
- flexible pipes, tubes and hoses, not of metal.
- Leather and imitations of leather;
- animal skins and hides;
- luggage and carrying bags;
- umbrellas and parasols;
- walking sticks;
- whips, harness and saddlery;
- collars, leashes and clothing for animals.
- Building materials (non-metallic);
- non-metallic rigid pipes for building;
- asphalt, pitch and bitumen;
- non-metallic transportable buildings;
- monuments, not of metal.
- Furniture, mirrors, picture frames;
- containers, not of metal, for storage or transport;
- unworked or semi-worked bone, horn, whalebone or mother-of-pearl;
- shells; meerschaum;
- yellow amber.
- Household or kitchen utensils and containers;
- cookware and tableware, except forks, knives and spoons;
- combs and sponges;
- brushes, except paintbrushes;
- brush-making materials;
- articles for cleaning purposes;
- unworked or semi-worked glass, except building glass;
- glassware, porcelain and earthenware.
- Ropes and string;
- tents and tarpaulins;
- awnings of textile or synthetic materials;
- sacks for the transport and storage of materials in bulk;
- padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics;
- raw fibrous textile materials and substitutes therefor.
- Yarns and threads, for textile use.
- Textiles and substitutes for textiles;
- household linen;
- curtains of textile or plastic.
- Clothing, footwear, headgear.
- Lace and embroidery, ribbons and braid;
- buttons, hooks and eyes, pins and needles;
- artificial flowers;
- hair decorations;
- false hair.
- Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors;
- wall hangings (non-textile).
- Games, toys and playthings;
- video game apparatus;
- gymnastic and sporting articles;
- decorations for Christmas trees.
- Meat, fish, poultry and game;
- meat extracts;
- preserved, frozen, dried and cooked fruits and vegetables;
- jellies, jams, compotes;
- milk and milk products;
- oils and fats for food.
- Coffee, tea, cocoa and artificial coffee;
- tapioca and sago;
- flour and preparations made from cereals;
- bread, pastries and confectionery;
- edible ices;
- sugar, honey, treacle;
- yeast, baking-powder; salt;
- vinegar, sauces (condiments);
- ice (frozen water).
- Raw and unprocessed agricultural, aquacultural, horticultural and forestry products;
- raw and unprocessed grains and seeds;
- fresh fruits and vegetables, fresh herbs;
- natural plants and flowers;
- bulbs, seedlings and seeds for planting;
- live animals;
- foodstuffs and beverages for animals;
- mineral and aerated waters and other non-alcoholic beverages;
- fruit beverages and fruit juices;
- syrups and other preparations for making beverages.
- Alcoholic beverages (except beers).
- smokers’ articles;
- business management;
- business administration;
- office functions.
- financial affairs;
- monetary affairs;
- real estate affairs.
- Building construction;
- installation services.
- packaging and storage of goods;
- travel arrangement.
- Treatment of materials.
- providing of training;
- sporting and cultural activities.
- Scientific and technological services and research and design relating thereto;
- industrial analysis and research services;
- design and development of computer hardware and software.
- Services for providing food and drink;
- temporary accommodation.
- Medical services;
- veterinary services;
- hygienic and beauty care for human beings or animals;
- agriculture, horticulture and forestry services.
- Legal services;
- security services for the physical protection of tangible property and individuals;
- personal and social services rendered by others to meet the needs of individuals.
- Tel. / fax: 06 58233422
Many people believe it is very complicated to register a trademark.
IActually, it is very simple if you appoint an expert in the field of trademarks.
We explain here below how to do, step by step:
Through the specific form, you can ask for a free of charge check of some of the registrability requirements of your trademark.
Our team will confirm if your trademarks seems to have a distinctive character and appears to be not contrary to the law, public policy or principles of morality. You will receive the result of this check by e-mail.
Apart from the exit, positive or negative, this check is free of charge and not binding for future steps with this firm.
In the event the free of charge check is positive, you will find attached to our e-mail two forms, one for proceeding with a similarity trademark search (optional, but strongly recommended by the firm in order to be aware of the existence of prior identical or similar trademarks conflicting with the sign of your interest) and the other for proceeding straight away with the filing of the trademark application, in the event you wish to file the application without performing any search.
Contextually you will be informed on the exact amount to pay through a bank transfer, depending you are a natural or a legal person (counting VAT or not), taking into account that the cost for filing an Italian trademark is the following:
- € 472 in one class, plus 4% of so called CAP to be calculated exclusively on the Attorney’s fees;
- € 50 for each additional class, plus 4% so called CAP to be calculated exclusively on the Attorney’s fees.
Method of payment:
- Bank transfer to::Banca Popolare di Milano – Ag.di Roma n. 00253
- IBAN: IT87D0558403202000000021963
- SWIFT: BPMIITM1253
As soon as we receive your instructions for the filing, together with a copy of the payment, we will prepare the documents for the filing.
In order to positively conclude the proceeding, you will be requested to send the Power of attorney singed in original by you to the following address:
- Avv. Eva Troiani
- Via Pasquale Revoltella 35
- 00152 Roma
Once filed the trademark application, you will receive a copy by e-mail.
- Tel. / fax: 06 58233422