First Appeal decisions issued on Italian Opposition Division decisions

• Decision No 12/2013 issued by the Appeal Board on 1 July 2013 (entered into the Register on  17 September 2013) rejected the appeal lodged against the Italian PTO that had refused the application for CAMPIONE COLLECTIONS (fig.)  for “leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery” in class 18, following the opposition by Champion Products Europe ltd. on the basis, amongst others, of its prior CTM CHAMPION (word) covering “suitcases, bags, boxes, wallets, coin purses, backpacks, briefcases;  parts of the aforementioned goods” in class 18 and “clothing, footwear and headgear and parts of the aforementioned goods” in class 25. 

With reference to the similarity of the goods, on the one hand the Opposition Division held that “travelling bags, hides and trunks “ covered by the application are identical and highly similar to “suitcases” and that “goods made of leather and imitations of leather” are identical and/or similar to “boxes, wallets,  coin purses, backpacks, briefcases;  parts of the aforementioned goods” as covered by the earlier mark.  Also,  “umbrellas” and “suitcases “  were held similar, even if to a lesser extent, as these goods are frequently produced by the same manufacturers and sold in the same shops.

On the other hand, pursuant to the Opposition Division decision, “leather, imitations of leather and animal skins” as well as “parasols, walking sticks, whips, harness and saddlery” are dissimilar to the goods covered in classes 18 and 25 by the prior mark.  

With reference to the similarity between the marks, the opposition decision found them conceptually similar and also, even if to a lesser extent, phonetically similar. The visual similarity was held to be low.  The reputation of the prior mark and resulting higher distinctiveness claimed by the Opponent was not held to have been sufficiently proven.  

• A second decision (No 13/2013) on an appeal against an Opposition Division decision confirmed the opposition decision to reject the application for the trademark LOIZA (word) for “optical apparatus and instruments” in class 9 and for related services in class 35, in light of the earlier Italian and Community trademarks LOZZA (word), LOZZA 1878 (word) and LOZZA SINCE 1878 (word) covering identical goods and services  and to order the applicant to pay 550 Euros to the opponent as the winning party.

• The Italian PTO Appeal Board’s decision No 11/13 accepted the joined appeals against the opposition decisions that had rejected the applications for the trademarks ALMA CELIA PRODUCTS (fig.) and PHARMA CELIA PRODUCTS (fig.) for, amongst others, “food for babies and dietetic substances for medical use” in class 5, in light of the opponent’s earlier CTM CELIA (fig.) covering identical goods in class 5.

In its decision, in line with the Italian case law (and as opposed to the OHIM Opposition Division decisions), the Appeal Board stresses that the assessment of a likelihood of confusion  is not an analytical evaluation but that it must rather take into account all elements as a whole, in the way that the relevant consumer would appreciate the mark. In the present case, therefore, the dominant element in the applications, according to the Appeal Board, is the central figure in colour which will grasp the main attention of the consumer of interest.  The fact that the common term, ‘celia’, refers to ‘celiaco’ (Italian equivalent for ‘coeliac’) is held to be of minor importance by the Board. 

 As a consequence, the opposition decisions are revoked and the applications are admitted to registration.  Also, the appellant/opponent is ordered to pay of 4000 Euros to the applicant.

 Decision No 15/13 issued by the Appeal Board confirmed the opposition decision to reject the application for a trademark ACQUA DI AMALFI (fig.) for “perfumery” in class 3, in light of the earlier Italian trademark AMALFI (word) covering all goods in class 3, and to order the applicant to pay 550 Euros to the opponent as the winning party.

•  The last of these Italian PTO Appeal Board’s decisions, No 16/2013 (entered into the Register on 11 November 2013) accepted the appeal against the opposition decision that had rejected the application for a trademark AB ANTONIO BASILE (fig.) in classes 14, 18 and 25, in light of the earlier Italian trademark BASILE (word) with rights reverting back to 1974 and covering class 25 goods.

The Appeal Board took into account the fact that the surname Basile is sufficiently widely used in Italy (as shown by the evidence produced by the applicant/appellant) to diminish the distinctiveness attributable to this term. This was also supported by the existence of coexistence agreements between other holders of trademarks in the clothing sector containing the surname in question.