In this article we tackle the issue of the judgment of affinity between the products and we examine some important opinions of the Italian Corte di Cassazione.
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”.
“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”.