The comparison between a complex trademark (consisting of a picture and a word) and a figurative trademark (consisting only of the image) was the basis of the decision number 46 issued by the Italian Patent and Trademark Office on March 25, 2014.
(If you want more information about trademarks: Types of Trademarks: Definition and Characteristics).
The image at the center of the dispute, present in both marks, consists of the imprint of an animal.
In the following, we will call “the Italian applicant” the opposed party and “the German company” the opposing party.
The Italian applicant filed an application for a complex mark in Nice classes 5, 10, 16, 18, 20, 21, 25, 28, 31 and 44.
The German company, owner of an earlier Community figurative trademark, filed an opposition against the products claimed by the other party in classes 18, 25 and part of class 28. The goods respectively claimed by the two marks in these three classes were identical or closely similar.
The German company argued that, in the context of a complex mark, it is not automatic that the verbal element is always the dominant one, as
“the figurative element may occupy a position equivalent to that of the word element”.
The Italian Patent and Trademark Office stated that in this case the marks were similar as the figurative element was the imprint of an animal, which was in both cases oriented in the same oblique direction from bottom to the top and from left to the right. The Italian Patent and Trademark Office did not give decisive value of differentiation to verbal component of the opposed mark, which, as consisting of a proper name and the word “PETS”,
“served as a vehicle to strengthen the conceptual content represented by the figurative, therefore … did not negate the similarity between the marks, but indeed strengthened the same”.
The Italian Patent and Trademark Office also mentioned the case law (case T-292/01 decision of 14.10.2003) that
“the degree of phonetic similarity between the two marks is of less importance in the case of products sold in such a way that at the time of purchase, the relevant public perceives visually the mark designating products”:
this would happen in relation to the products in this case, namely clothing and shoes, regarding which
“the visual impressions of the mark mush have more weight”.
For the reasons mentioned above, the opposition was upheld for all the contested goods and the application was rejected in respect of such products.