It’s a family affair: FAMILYMART and FAMILY MART marks held "conceptually dissimilar"

On 28th June 2013 the Opposition Division of the Italian Patent and Trademark Office (PTO) issued its decision in FamilyMart Co Ltd v Litardi Claudio. Although it concluded that the opposed trademark FAMILY MART was confusingly similar to the word mark FAMILYMART, the Opposition Division found that the two trademarks were not conceptually similar since the average Italian consumer would not perceive the meaning of the trademarks considered as a whole. This approach confirms a troubling inconsistency in the PTO’s examination of the similarity of trademarks.

On 7th October 2011 FamilyMart Co Ltd filed an opposition against the registration of FAMILY MART. The opposition was based on the earlier Community trademark FAMILYMART, registered in Class 35 for retail services and retail store services in connection with several types of product, including food. The action was directed against all products claimed by the opposed trademark in Classes 30 and 31. The opposition grounds were provided for in Article 12(1) (c) and (d) of the Industrial Property Code, concerning the requirement of novelty for new trademark applications.

On 28th June 2013 the Opposition Division issued a decision upholding the opposition for the contested goods in Class 30. According to the examiner, the opposed mark was visually and phonetically similar or identical to the earlier distinctive sign belonging to FamilyMart Co Ltd, and the products in Class 30 were similar to the extent that they were complementary with the services claimed in Class 35. Consequently, there was a likelihood of confusion between the trademarks, including a likelihood of association, as the average Italian consumer could have believed that the products offered under the FAMILY MART brand came from the same source or that there was a link between the companies.

The outcome of this case appears to be consistent with EU case law. However, the principles applied to the examination of conceptual similarity are questionable.

When considering the meaning of the trademarks, the examiner found that the earlier FAMILY MART trademark referred to “supermarket services directed to families”. However, according to the examiner, such meaning was not easily understandable by Italian consumers. Consequently, he concluded that the trademarks had no common meaning for Italian consumers and thus should not be considered to be conceptually similar.

The logical flaw between the examiner's reasoning and his conclusion is apparent when noting that the trademarks FAMILYMART and FAMILY MART are composed of identical words. Even if an Italian consumer were unable to perceive the meaning of each word or the significance of the combination of the words (although the word 'family' evokes the Italian word 'famiglia'), the consumer would undoubtedly notice that the words were exactly the same.

As a consequence, even assuming that an Italian consumer was unable to perceive the meaning of all of the words or the trademarks, he or she could easily conclude that they have the same significance, whatever that significance might be.

Related case law
This case is the latest example of the confusing and unpredictable decisions of the IPTO in assessing the conceptual similarity of trademarks.

In Opposition 240/2011 (Decision 42/2013), when comparing the opposed trademark BRAKE-PLANET and the earlier mark PLANET BRAKE DISK SYSTEM, the IPTO affirmed that the meaning of the words 'planet', 'disk' and 'system' could be easily perceived by Italian consumers as they were phonetically similar to the corresponding Italian terms, and thus were common knowledge. On the other hand, the examiner affirmed that the term 'brake' was not understandable by Italian consumers.

On this basis, the Opposition Division determined that it was not possible to proceed with a conceptual comparison, as the perception of the trademarks as a whole was precluded due to the absence of a common understanding of the term 'brake', thus considering irrelevant the fact that the other words in the trademarks were known by consumers and were identical to each other.

In contrast, in Opposition 437/2011 (Decision 55/2013) the examiner compared the trademarks BOSS and BOSSERT, finding that the word 'boss' could be easily perceived by Italian consumers to mean 'chief' or 'supervisor', while 'bossert' had no particular meaning. Nevertheless, the examiner affirmed that the compared trademarks were similar because, in the minds of consumers, both  evoked the concept of a person with command functions. 

The criteria of conceptual similarity were applied differently in four June 2013 decisions (Decisions 44/2013, 45/2013, 46/2013 and 47/2013), each involving the same applicant and opponent. When comparing the earlier trademark IMPERIAL with four subsequent trademark applications (IMPERO DIAMONDS and device, MISS IMPERO and device, MISS IMPERO and IMPERO UOMO and device), the Opposition Division held that the word 'imperial' could be understood as the Italian word 'imperiale' – that is, the adjective of the word 'empire'. On the other hand, the word 'impero', included in the opposed trademarks ('empire' in English) would be perceived as the territory held by an emperor.

Although it concluded that the words 'imperial' and 'impero' shared the same common root, the Opposition Division concluded that there was no conceptual similarity, since something related to empire ('imperial') was not similar to the territory of that empire ('impero').

The Opposition Division's approach to assessing the conceptual similarity of trademarks lacks consistency. The various principles that it has applied have resulted in a high degree of uncertainty in predicting opposition outcomes, so that conflicting decisions can result even in similar cases.

Despite the tendency to adopt strict criteria in the assessing conceptual similarity of trademarks, the Opposition Division's reasoning is clearly inconsistent, and likely will continue to evolve.

Until the Opposition Division achieves greater consistency, trademark owners face major uncertainty when deciding whether to pursue oppositions against trademark applications or when assessing the availability of a new trademark.

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