How strong is a fortress? Inconsistency over confusing similarity between trademarks

A recent decision held that the trademarks FORTEZZA (meaning 'fortress') and FORTENZA were not confusingly similar. The decision is inconsistent with other decisions in similar cases and confirms that the newly introduced opposition proceedings in Italy still come with the risk of highly unpredictable results.

A fortress falls
In an October 2013 decision on Opposition Proceeding 241/2011, the grounds of which have just been published, a Patent and Trademark Office Opposition Division examiner held that the prior trademark FORTEZZA and the opposed trademark FORTENZA were not confusingly similar, even though both were associated with identical Class 5 products, including fungicides, herbicides and preparations for destroying noxious animals.

At first blush, the decision seems well grounded, but on further consideration it is difficult to accept that the coexistence of FORTEZZA and FORTENZA for identical products will not create a risk of confusion in the minds of consumers.

The decision relied primarily on the fact that FORTEZZA is an easily understandable Italian word, meaning many things, including 'fortress' and 'strength', although the later meaning is falling into disuse. On the other hand, FORTENZA has no meaning. Thus, the signs were conceptually different. Moreover, if the consumer interpreted FORTEZZA as 'strength' then, according to the decision, the prior mark would be considered weak from a distinctive point of view.

According to the examiner, considering the close attention paid by consumers to these types of product and the weak distinctive character of the prior mark FORTEZZA, the conceptual differences counteracted the high visual and phonetic similarities, thus excluding the risk of confusion.

Similar (or not so similar) cases
In August 2013, in Opposition Proceeding 44/2011, a different examiner found that the trademarks BEAR BEER and BARBEER, both associated with beers and other non-alcoholic drinks, were confusingly similar. The examiner stated that only a relatively small number of Italian people would understand the meaning of the English words contained therein, and therefore the conceptual differences could not counteract the high degree of similarity of the trademarks from a visual and phonetic point of view.

It is difficult to believe that Italian beer consumers would not understand the meaning of the English term BEER. In addition, BAR is also the Italian word used for bars. Nevertheless, the examiner did not fully consider the conceptual differences between BEAR and BAR, and thus reached a very different conclusion from that in the FORTEZZA decision.

In November 2013, in Opposition Proceeding 337/2011, the examiner found that the trademarks ARIA and ARYA, both associated with wines, were confusingly similar. The examiner stated that the signs under comparison were conceptually different, since 'aria' would be immediately perceived as meaning 'breath', while 'arya' had no meaning. However, in this case, according to the examiner, the high phonetic and visual similarities counteracted the conceptual differences. 

Comparatively new proceedings
The Italian trademark opposition proceedings have been in place for less than three years and the first decision of the Opposition Division was issued in September 2012. Most people agree that the introduction of opposition proceedings in Italy was a positive step for rights holders as well as the judicial system, which saw its workload decrease somewhat.

The proceedings are still relatively new, but for now at least one thing is certain – nothing is certain! An examination of the decisions issued in the last 18 months suggests that the interpretation of the potential risk of confusion between trademarks under comparison has been overly subjective. Therefore, it is impossible for a rights holder which is looking for a new available trademark to rely on legal certainty.

Conceptual comparison
The well-known European Court of Justice Picaro/Picasso decision (C-361/04), which is followed by Italian examiners, held that “in certain circumstances” conceptual differences can counteract the visual and phonetic similarities between the signs concerned “when at least one of the signs at issue has, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately”.

The phrase 'in certain circumstances' is the likely source of most of the disparate outcomes. These circumstances are, in addition to the degree of visual and phonetic similarity and the degree of similarity between the products, the level of consumer attention and the distinctiveness of the trademarks.

The result is that the final interpretation is often left up to the examiner. 

Do trademark lawyers agree with these decisions? Probably not – it is likely that when conducting a trademark availability search, the lawyer's opinion would have conflicted with at least the first two decisions discussed above. Although it is undeniable that trademark availability searches are to some extent subjective, when decisions are this unpredictable it becomes increasingly difficult for a rights holder to rely on legal certainty.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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