Recent PTO decisions on complex marks: consistency optional

In April and May 2013 the Italian Patent and Trademark Office (PTO) issued three separate decisions in opposition proceedings involving complex marks, the grounds of which have now been published. All three decisions focused on a visual analysis of the conflicting trademarks, but the principles underlying the analyses were applied differently in each case. Trademark oppositions are still relatively new in Italy and further efforts are needed in order to provide consistency, and thus predictability, in this area of law.

Trademark oppositions: a new game
Opposition proceedings began in Italy in July 2011 and decisions are issued regularly. However, such decisions reveal troubling discrepancies in the assessment of complex marks.

Identifying and correctly determining whether a component within a mark is dominant is not an easy task. This task was further complicated following the introduction by the European Court of Justice (ECJ) of the concept of an 'independent distinctive role' (Case C120/04, LIFE/THOMSON LIFE). Since then, many parties have sought protection for elements of a mark that in reality are neither prominent nor distinctive.

As discussed below, the three PTO decisions issued in April and May 2013 are not consistent between themselves, or with certain principles established by the ECJ.



In a 5th April 2013 decision (Case 22/2013, SPYKE word/JOE SPIKE and device, Classes 18 and 25) the marks were found to be visually, phonetically and conceptually similar mostly because, consistent with Italian practice, the “heart of the mark” was recognised to be the verbal component, while the figurative elements were regarded as less important.

However, in this case the device of the second trademark was significantly elaborate and fancy. The words JOE SPIKE were superimposed on the device and the lines of the letters were thin and mixed with the colourful shape underneath, so that the words were barely legible. Nonetheless, the examiner held that “it is the verbal component of both the prior mark and of the contested mark, which has primary importance in comparison to the other elements” – despite the fact that the figurative elements in the contested mark were distinctive, had a dominant position and large dimensions, while the mark on which the opposition was based had no similar components.



Contrary to the SPYKE decision, a 22nd May 2013 decision (Case 293/2011, CAPRI script/CAPRIALIVE and device, Classes 18 and 25) rejected the opposition on several bases. In this case the examiner held that:

The figurative part of the contested mark should be considered as its dominant component because some of the letters of the term CAPRIALIVE intersect the circles of the figurative component which are, thus, less perceptible for the consumers.

This statement followed the examiner correctly noting that the common component CAPRI was not dominant in the contested mark. However, CAPRI was still the first word in the sign, was visually distinguishable from the attached term ALIVE, was in a different script and in bold, and was not hidden by the figurative component – certainly not when compared to SPYKE. Therefore, one would have expected that the examiner would confirm that CAPRI bore an autonomous distinctive position within the mark, and that the identity of the word CAPRI in the two trademarks offsets their differences. The examiner, however, reached the opposite conclusion.



Finally, in a 30th May 2013 decision (Case 53/2011, GOLOSETTA word/LE GOLOSETTE and device, Class 29) the examiner accepted the opposition and rejected the application. Apart from a number of errors in the text of the examiner’s decision (eg, incorrect trademark and opposition numbers, incorrect class and reversed indication of goods of opponent and applicant), the decision is substantively well reasoned in its comparison of the respective goods in Class 29.

The examiner convincingly described the limited impact of the device elements, pointing to their decorative and descriptive character for Italian consumers, who would easily recognise the shape of the island of Sardinia. As a result, the opponent obtained a favourable decision, even though the examiner did not clearly address whether the word 'Golosette' represented the dominant component of the opposed trademark.

If a common trend can be divined from these disparate decisions, it may be that a visual analysis of trademarks is gaining more weight at the PTO. Decisions, both good and bad, start from this point. This trend seems to be more consistent with ECJ case law, which confirms that when a mark consists of both figurative and verbal elements, it does not automatically follow that it is the verbal element that must always be considered dominant.

However, further efforts are needed by the PTO in order for its decisions to be considered consistent and predictable by parties involved in opposition proceedings.

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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