LIKELIHOOD OF CONFUSION: IT'S AN ITALIAN NAME GAME

The IPKat spotted a couple of pretty average-looking decisions on Community trade marks from the Court of First Instance today. They are

* Case T-185/03 Fusco v Office for Harmonisation in the Internal Market . The applicant sought to register as a Community trade mark the words ENZO FUSCO, for clothing. Antonio Fusco International opposed, citing its earlier Community trade mark ANTONIO FUSCO for the same goods. The Opposition Division and the Board of Appeal both found that the relastively uncommon Italian surname Fusco, which appeared in both signs, was more distinctive than the forenames and that, since the goods were identical, the presence of the word Fusco in both signs gave rise to a plausible likelihood of confusion. The applicant appealed unsuccessfully to the Court of First Instance (CFI) which ruled that, since Italian consumers generally attributed greater distinctiveness to the surname than the forename, they would keep in mind the name Fusco and would be confused by different marks for the same goods if they bore that name.

* Case T-169/03 Sergio Rossi SpA v Office for Harmonisation in the Internal Market. An application was made to register as a Community trade mark the word mark SISSI ROSSI for goods in class 18 (leather goods and bags). Sergio Rossi opposed, arguing that there was a likelihood of confusion with his earlier Community and international trade marks for MISS ROSSI, registered for goods within class 25 (footwear). Reversing the Opposition Division, the Board of Appeal found that the differences between the goods outweighed their few common points and concluded that there was no likelihood of confusion within Art.8(1)(b). Sergio Rossi's appeal to the CFI failed since the goods -- though complementary -- were too dissimilar and their intended purposes were different: shoes were used to dress feet while bags were used for carrying objects. It followed that the goods were not interchangeable and therefore not in competition. Also, while the marks bore a resemblance in some respects, they shared the common Italian surname Rossi which was not prominent in the marks. The words ‘Sissi' and ‘Miss', which were the dominant elements of the marks, had only an average, if not slight, degree of similarity. This being so, the Board of Appeal was right to hold that there was no likelihood of confusion.

The fact that these MISS ROSSI shoes are complementary to leather
bags, not similar to them, means the mark gete less protection

The IPKat likes the symmetry of these cases: in the first, the fact that the marks shared an uncommon surname meant that confusion was likely while, in the second, the fact that the surname was common meant that confusion was improbable. However, if it is correct that goods which are complementary are not to be treated as similar, Merpel foresees problems. Fishing rods and fish-hooks are entirely different products but they are complementary. A fisherman seeing similar or identical marks on those two products could be forgiven for assuming that they had the same origin.

Italian male, female and last names here