WHAT DO YOU BET THAT…ADVERTISEMENT IS NOT THE ONLY EVIDENCE TO PROVE THE USE OF A TRADEMARK?
During the proceeding which ended in favour of the company IGT Germany Gaming GMBH, represented by Barzanò & Zanardo S.p.a., it was pointed out that it is necessary to conduct an evaluation comprising the possible restrictions on advertising, in order to collect the evidence according to art. 178, clause 4 of I.P.C.
In the recent years, the regulation about gambling advertisement has been repeatedly reviewed. Lastly, the Legislative Decree n. 87 of 2018 (later changed into Law of August 9th 2018, n. 96) included the absolute prohibition to make any form of advertisement – either direct or indirect – promoting games or bets with money payouts. However, the regulation was already strongly limiting for companies in this field even before this provision.
Therefore, the Examiner – according to what highlighted by the opponent in the related statement – confirmed to have taken into account the national regulation about the gambling advertisement, with reference to the evidence of use of an earlier wordmark named “SPHINX” which was registered to distinguish goods and services belonging to such activity.
Article 178, clause 4 of I.P.C. states the possibility for the applicant to request to the opponent the evidence of use of the earlier trademark the proceeding is based on, if this has been registered at least for five years.
In particular, such proof must refer to the use of the mark in relation to goods and services the opposition is grounded on.
Therefore, the opponent is required to provide “suitable documents to prove that such trademark has been actually used – during five years before the registration or priority date of the opposed trademark – by him/her or with his/her consent for the goods and services it has been registered for and which the opposition is grounded on” or “that there are legitimate reasons for non-use”. In case of absence of proof, the opposition is rejected for the goods and services the dispute is based on for which it was not possible to demonstrate the use of the trademark.
Moreover, in relation to the proof of use, article 53 of D.M. n.33/ 2010, clause 4 specifies that it “has to be relevant for the place, the time, the extension and the nature of the use of the earlier trademark”, and can “consist of documents and packaging samples, labels, price lists, catalogues, invoices, shipping or exportation documents, photos, newspaper articles, written declarations and similar materials”.
Considering such provisions, the Italian Patent and Trademark Office confirmed as sufficient the proof of use – for goods included in classes 9 and 28 – of the wordmark “SPHINX” by the company IGT Germany Gaming GMBH based on invoices, fact sheets, publication in magazines and third party’s video posted online and dating back to the period considered. Thus, in the decision it is taken under consideration that it is impossible to prove the genuine use of a trademark in the gambling field with the typical methods, such as the advertising investments and the publicity itself.
As a consequence, the prohibition stated in Law n. 96 of 2018 and any other kind of restriction – even though it doesn’t represent a legitimate reason of non-use in itself – should be taken into account in the evaluation about the evidence of use of a trademark distinguishing goods and services included in the above-mentioned prohibition.
In fact, such remark doesn’t exempt the opponent from the obligation to prove the use of his/her trademark, while it weakens very much the need to demonstrate that the goods and services it distinguishes were known by a large audience of consumers with common advertisement means.
In the present proceeding, the company IGT Germany Gaming GMBH was opposing to the application for registration of the wordmark “Sphinx” in classes 9 and 28 in Italy by the company ADP Gauselman GMBH. In particular, the company IGT Germany Gaming GMBH claimed that there was a likelihood of confusion – according to article 12, clause 1, letter d) of I.P.C. – with their earlier trademarks represented by the wordmark “SPHINX”, which was registered in classes 9, 28 and 41.
In the table below, you can see a clear comparison between the trademarks and the related goods and services:
The Opposition Division, while recalling that article 12, clause 1, letter d) of I.P.C. states that signs shall not be registered as trademarks if on the date of filing of the application “they are identical or similar to a trademark already registered by others in the Country or having effect in the Country, following an application filed on an earlier date or having effect as from an earlier date due to a right of priority or a valid claim of seniority for goods or services that are identical or similar, if due to the identity or similarity between the signs and the identity or similarity between the goods or services there is a likelihood of confusion on the part of the public, which includes a likelihood of association between the two signs”, also ascertained the existence of a likelihood of confusion.
The Examiner indicated that the two trademarks compared were identical, as they both are wordmarks consisting of the word “SPHINX”, made up of six letters, two syllables “SPHI-NX” and having the same conceptual profile (“SPHINX” is an English or French word, easily recognizable by the Italian consumer by the meaning of “sfinge”).
In the goods comparison, the Office observed an identity and similarity in relation to goods included in classes 9 and 28.
Lastly, with regards to the evaluation of the relevant public – according to what already established by the previous case law – the Office considered the average consumer of the relevant category of goods/services normally informed and reasonably observant and circumspect, also taking into account that the attention level can change depending on the category of goods/services. That being said, the Examiner decided to consider two groups of consumers, namely both the “large public” and the (smaller) specialized public, having specific professional knowledge. Then, with regards to these groups, the likelihood of confusion was confirmed and it was highlighted that – for article 12 I.P.C. to be applicable – it is sufficient to foresee such risk for at least one group and not necessarily for both of them.
Therefore, in light of the above mentioned condierations, the Italian Patent and Trademark Office confirmed the existence of a likelihood of confusion/association for the relevant public according to article 12, clause 1, letter d) of I.P.C., so it allowed the opposition filed and rejected the national registration application n. 302017000105542, thus recognizing the genuine use of the earlier trademark “SPHINX” in relation to goods included in classes 9 and 28.