A rose by any other name does not necessarily cause confusion
In a recently published decision (Case 7326 – Decision 03/04, Iniziative Srl v Italian Patent and Trademark Office, September 23 2013) the Board of Appeal issued a ruling following an appeal by Iniziative Srl requesting the annulment of the decision of the Italian Patent and Trademark Office (PTO) relating to Opposition 139/2011 (Société d’Exploitation Du Parc Des Expositions De La Ville de Paris – VIPARIS PORTE DE VERSAILLES v Iniziative Srl).
On June 13 2011 Iniziative filed an Italian application to register the following trademark for services in Classes 36 and 37.
On November 2 2011 the Société d’Exploitation Du Parc Des Expositions De La Ville de Paris – VIPARIS PORTE DE VERSAILLES filed an opposition against the registration of the contested trademark.
The opposition was based on International Registration 997883 (extended to the European Union) for the following trademark in Classes 35, 36, 38, 39, 41, 42, 43 and 45.
VIPARIS requested that the contested trademark be rejected based on a likelihood of confusion due to the similarity of the figurative elements, and the identity and similarity of the designated services.
On April 2 2013 the PTO ruled on Opposition 139/2011, agreeing with VIPARIS that there would be a likelihood of confusion. In its decision the PTO cited the following grounds for its decision:
- The contested services of both parties were either identical or similar. Visually, the signs were similar to the extent that they were perceived as stylised flowers.
- The verbal elements in the earlier trademark played a secondary role.
- It was not possible to compare the trademarks aurally, as one of the trademarks was purely figurative.
- Conceptually, the signs had a moderate degree of similarity, as each would be associated with the concept of a flower.
- The figurative component in the earlier trademark, by virtue of its position and size, was the visually dominant element. Although, in principle in trademarks consisting of verbal and figurative elements, the verbal component of the trademark has a stronger impact on the consumer than the figurative element, the figurative element in the earlier trademark represented the eye-catching and distinctive part of the mark.
- The earlier trademark had sufficient distinctive character since there was no link between the services and the mark itself.
- There was a likelihood of confusion by the public as to the origin of the involved services.
Iniziative filed a notice of appeal against the decision. Iniziative argued that the PTO erred in finding that the earlier and contested trademarks were visually similar and were not phonetically comparable, since the earlier trademark included the dominant words “VIPARIS - venues in Paris”, which also served to identify the opponent’s company, whereas the contested trademark consisted only of a figurative element.
Board of Appeal decision
The Board of Appeal sided with Iniziative, overruling and vacating the PTO’s decision. The board based its decision on the following:
- The assessment of the similarity between two trademarks does not consist of an analytical comparison of the components of the trademarks in dispute. On the contrary, the comparison must be made by examining each of the marks in question as a whole, as the public would perceive them, taking into account their dominant components.
- As a whole the two trademarks were not so similar as to cause likelihood of confusion.
- The earlier trademark consisted of a graphic symbol and of the words “VIPARIS – venues in Paris”. The word 'VIPARIS' coincided with the opponent’s company name and represented the distinctive part of the earlier trademark.
- The presence of the element VIPARIS and the absence of any word in the contested trademark excluded the possibility of confusion.
- Contrary to the PTO's determination, the figurative element was not eye catching and was not more distinctive than the word portion of the earlier trademark.
- In addition, the parties’ figurative elements did not convey the same impression of a stylised flower.
The decision adopted by the Board of Appeal is in line with the standard practice of the Office for Harmonisation in the Internal Market when comparing trademarks that include figurative elements. As a result, the following conclusions can be drawn:
- The global evaluation of the similarity of trademarks must be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components. The average consumer perceives a mark as a whole and does not analyse its various details individually.
- When trademarks show both word and figurative components, the verbal element will usually have a stronger impact on the consumer than the figurative component.
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