The Italian Corte di Cassazione stated several time about the judgment of the risk of confusion concerning complex trademarks and has reiterated the opinion that the judge has to evaluate each of the elements of the complex trademarks.
In this post we talk about:
The judgment of the risk of confusion in the italian trademark
In the judgment of 18 January 2013 n.1249 the Italian Corte di Cassazione considered incorrect the grounds of the Court of Appeal which excluded the risk of confusion between two trademarks on the basis of an evaluation made by examining each of the marks in question “as a whole”. The marks in question were composed of a common figurative element (head of a deer) and a different verbal element.
In the opinion of the Court
“the Court of Appeal had to point out that the mark was composed of two distinctive elements (hearts), the deer and the word, and therefore should have considered in relation to each of these two elements, the similarity between the two marks and then the existence of a risk of confusion”.
Another important principle stated by the Supreme Court in that judgment is that
“It does not seem acceptable in terms of logic the absolute statement that in a complex mark the word always prevails on the graphic element… There does not exist an abstract hierarchy among the distinctive elements of a mark, as in many cases figurative elements could have a distinctive character even higher than verbal elements “.
Ergo, two marks composed of identical or similar graphic element and different words can be considered similar despite the diversity of their verbal components.
The judgment of the risk of confusion in the European Union trademark
The approach of the Italian Corte di Cassazione in the assessment of the likelihood of confusion of complex marks differs from the EU case law, according to which the global assessment of the likelihood of confusion must be based on the overall impression given by the marks.
In the judgment of 12 June 2007, Case C-334/05, the Third Chamber of the European Court of Justice stated that:
“ It is important to note that, according to the case-law of the Court, in the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more that taking just one component of a composite trademark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trademark may not, in certain circumstances, be dominated by one or more of its components”.
This principle is also confirmed by the most recent judgment of 3 September 2009 (First Chamber, C-498/07), in which the Court, after the statement that:
“The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks”
“In the context of examination of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trademark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole”.