The risk of confusion between weak trademarks
In a previous article (click here to read it), we spoke about the importance of the trademark, its main function – i.e. identifying and enhancing the company’s products/services, distinguishing them from those of its competitors and defending them from counterfeiters – and its distinctive character, which is also necessary to understand the difference between a strong and a weak trade mark.
The trademark, in order to be distinctive, must be perceived by the consumer public as a means of identifying the commercial origin of the goods or services in question, thus enabling them to be distinguished from those of competitors without any possibility of confusion.
A strong trademark, therefore, being characterised by a sign (word, design, letter, numeral, sound, colour tone) or a combination thereof, which are conceptually unrelated to the goods or services it trademarks, will enjoy greater protection against competitors using similar trademarks for identical goods or services.
Conversely, a weak trademark, which describes the essence or content of a product or service, or at least recalls the concept (e.g., the word representing the mark coincides with the generic name of the product or describes its characteristics), will enjoy less protection against competitors, with the risk of confusability between trademarks.
Confusability between weak trademarks
With decision no. 16250/2024 of 25 October 2024 (click here to read it), the specialised section on companies of the Court of Rome dealt precisely with the issue of the confusability between so-called weak trademarks, at the outcome of a case brought by a company (which we will call ‘A’), owner of 7 EU trademarks, against companies ‘B’ and ‘C’, owners of 4 Italian tradetrademarks.
Company ‘A’ asked the Court to declare the invalidity of the trademarks with the wording ‘E.P.’, belonging to ‘B’, for lack of novelty requirement, pursuant to Article 12 lett. a), b), d), e) of the Industrial Property Code (Legislative Decree no. 30/2005).
The Court of Rome, however, after noting that the trademarks of company ‘A’, for which it sought protection, dated back to the year 2000, pointed out that during those years it had never challenged the use of its tradetrademarks by company ‘B’, even though company ‘A’ was aware of the use of the trademark by ‘B’ to mark the parking service inside the airport that the members of company ‘A’ used.
Furthermore, the Court stated that:
- the trademarks for which company ‘A’ sought protection were weak tradetrademarks, “albeit with an appropriate characterising capacity”;
- “the partial differentiation of the orange square and the addition of the indication of the specific and peculiar service to which it refers, that of parking in a very specific area such as that of the airport”, made the differentiation (with the mark of company ‘A’) “sufficient to avoid a link between the tradetrademarks”;
- “the long coexistence on the same market of the plaintiff’s signs with those of the defendants’, which since 2006 have also consisted of an orange square crossed by a white stripe, with the white writing ‘E.’ inside and the blue writing ‘P.’, had ‘determined a widespread awareness of the different entrepreneurial origin, which excludes any risk of confusion’, also considering that the mark was used in relation to the parking service limited to the airport area.
Therefore, the Court rejected the application filed by company ‘A’, deeming its trademarks ‘weak’ and, therefore, deserving of less protection.
In fact, the slightest graphic difference between the trademarks of company ‘A’ and those of company ‘B’ was judged sufficient to avoid a connection between the two; likewise, the long coexistence of the trademarks in the same market was evaluated as a fundamental element to ascertain the different entrepreneurial origin and, therefore, to exclude confusion between the two trademarks.
