“C’è chi può e chi non può: io può”
Article 176 of IPC establishes for opposition applications – under paragraph 5 – that “an opposition may be used to claim the impediments to registration of the trademark established by Article 12, paragraph 1, letters c), d), e) and f) and by Article 14, paragraph 1, letter c-bis), for all or a part of the goods or services for which registration has been requested, and the lack of consent to registration by the qualified persons identified in Article 8”.
Under such terms, the company Essential Export S.A. from Costa Rica partially opposed to the grant of the (figurative) trademark Totò in classes 18 and 25, based on an alleged risk of confusion with its existing trademark component “TOTTO” in stylized characters, according to article 12, paragraph 1, letter d) of IPC, aiming at protecting among others also goods and services in classes 18, 25 and 35.
You can see as follows a comparison between the two trademarks with related products and services:
| Application n. 302016000068817 by Antonio De Curtis known as Toto’ Association | Previous EU registrations by Essential Export S.A. |
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Figurative trademark
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EUTM n. 15213457 for the figurative trademark
EUTM n. 6212451 for the figurative trademark
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Class 18: bags, leather and imitations of leather, trunks and suitcases, walking sticks, whips and saddlery, umbrellas and parasols, animal skins. |
Class 18: leather and artificial leather, carrying bags, business card cases, pocket wallets, sacks; umbrellas, parasols and walking sticks, not including bags and products for sports; leather and imitations of leather, similar articles not included in other classes; trucks, luggage and suitcases. |
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Class 25: clothing, footwear and headwear, swimwear, aprons, T-shirts, pyjamas, scarves. |
Class 25: clothing, footwear and headwear, not including swimwear, sportswear, footwear and headwear for sports; personal lining and casual clothing such as jeans, trousers, tracksuits, shirts, T-shirts, hoodies including sweaters; headwear and footwear, except for: swimwear, sportswear, footwear and any other product intended for sports. |
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Class 35: business administration with the object of manufacturing and selling goods or services, except for swimwear and specific articles for sports. |
The Opposition Division, while reminding that article 12, paragraph 1, letter d) of IPC establishes that signs shall not be registered as trademarks if as of 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 exists a likelihood of confusion on the part of the public, that can also consist of a likelihood of association between the two signs”, ascertained the absence of the risk of confusion, stating that these trademarks are not similar taken in their general impression.
Certainly, the examination results to be particularly relevant: the examiner conducted a visual, phonetic and conceptual analysis as usual, and accurately considered the elements differentiating the two signs to finally confirm that they are not similar to each other.
In particular, the Opposition Division of the Italian Trademark Office reports that the two trademarks have different graphic look and stylization, together with a different sound – although they share the four letters “toto” -, thanks to the evident and irrefutable accent on the last “o” in the opposed trademark. Lastly, it was also confirmed that the name “Totò” conveys a specific concept and bears a clear and precise semantic content for the reference public, because it constitutes an immediate association with “the person of the famous Italian actor and comedian Antonio de Curtis best known by his stage name Totò and nicknamed “prince of laughter”, as considered – also for some dramatic roles – one of the greatest performers of the Italian theatre and cinema. Today, he is still believed to be the most popular Italian comedian of all times.”
While conducting the comparison of the goods, the Office – even taking into account the overlapping in the same classes 18 and 25 – highlights the lack of similarity between these ones and the services included in class 35, claimed by the opponent registrations, where there is no point of contact and similarity, considering “the different nature of the services, as they are intangible while products are tangible; they are not competitors, nor complementary and they meet peculiar and different needs, for different end users and – last but not least – through different distribution channels”.
In light of the above-mentioned evaluations, the two trademarks are considered overall different, thus excluding the risk of confusion between them. Therefore, the opposition was completely rejected.
In absence of appeals to the Board of Appeal, the registration application will follow its procedure until granted. So, the trademark represented by Totò’s signature will keep evoking one of the best national actors and comedians ever: Totò, with his elegant and polite attitude, with his irony and improvised creativity. He hardly repeated his script while acting his roles, and successfully interpreted profound themes with an extraordinary class and a pleasant casualness.
Hurray
The advice of specialized experts, even in case of opposition proceedings, can be fundamental in order to develop the best protection strategy for your IP rights.