The legal principle that minor differences to a weak mark can have a significant impact on the likelihood of a finding of no confusion was reaffirmed with a recent decision by the First Section of the Italian Supreme Court (Order No. 28818/2017).

The dispute that led to this SC decision involved two Italian trademarks: the registered mark “Imperial” and the trademark application for “Impero Uomo”. Imperial SpA, owner of the trademark “Imperial”, filed an opposition with the Italian Patent and Trademark Office (IPTO) against the trademark application “Impero Uomo” in class 25 for clothing and related classes.

The IPTO and the Board of Appeal rejected Imperial SpA’s opposition on the following grounds:

“Imperial” is a weak trademark as it consists of a word which is commonly used for praising the quality of products. Thus, since the trademark “Imperial” represents a variation of the word “impero” (Italian word for kingdom) it is not sufficiently distinctive to prevent the filing of other trademarks containing the suffix “imper-”, especially in circumstances involving a complex trademark (i.e. a sign that consists of both verbal and figurative elements), such as the one opposed.

Following this decision, Imperial SpA filed an appeal with the Italian Supreme Court. However, the appeal was unsuccessful and the opposition rejected.

The main reasons for Imperial’s request to the Court were twofold:

1. they alleged that the IPTO and the Board of Appeal had not correctly applied the rules of the Italian Intellectual Property Code, based on the argument that they did not acknowledge the proper strength of the “Imperial” trademark given by the lack of any connection of the word to the products for which it was being used; and

2. they also alleged that the applicant’s word mark was a so-called “complex mark” as it is the result of a combination of the two words “Impero” and “Uomo” and of the figurative element consisting in a stylized crown. This, they argued, required an assessment of the elements that have a distinctive character within the trademark itself. According to the appellant this would be due to the fact that a comparison between a simple trademark and a complex one would require the identification of the dominant element of the latter. They argued that the attention, in this case, is brought by the dominant word element “Uomo”. Imperial SpA challenged the decision of the Appellate Court claiming that, by acknowledging the descriptive nature of the word “Uomo” (Italian for “man”), which identifies with the portion of the market to whom the products are aimed, the Commission did not consider that that same descriptive nature is in itself the cause of the lack of distinctive capacity, as it identifies with the products sold under the trademark “Impero Uomo” (i.e. men’s clothing).

However, the Supreme Court found that Imperial SpA’s reasoning lacked substantive grounds.

As to the first reason, the Court reminded the appellant that consistent case law confirms the weak nature of trademarks consisting in words used in the common language. At the same time, the case law holds that such words can be used when there is little to no connection with the products they identify.

In this particular case, however, the word “Imperial”, is an indication of the quality of the product or service and therefore lacks any originality or inventiveness that could grant it greater strength.

As regards the second reason, the Court stated that the use of the word “Uomo” does not constitute the distinctive element of the challenged trademark. The Court then claimed that the Board of Appeal correctly recalled the case law, which states that signs that form a complex trademark do not necessarily have to have a strong distinctive nature but they can lack, either together or individually, any particular distinctiveness, with the only consequence that the complex trademark will be considered weak.

Thus, the Supreme Court rejected Imperial SpA’s appeal.

The decision confirms an important distinction retained in Italian case law between strong and weak trademarks.

This case leads to a general conclusion that whereas in the case of a strong trademark any minor differences in a later mark – even if they do not change the core of the original trademark – could be considered relevant for infringement purposes, on the other hand in the case of a weak trademark any slight variation could be such as to exclude confusion between trademarks and therefore any possible infringement.