opposition<\/a> is grounded on.<\/p>\nTherefore, the opponent is required to provide \u201csuitable documents to prove that such trademark has been actually used<\/em> \u2013 during five years before the registration or priority date of the opposed trademark \u2013 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\u201d <\/em>or \u201cthat there are legitimate reasons for non-use\u201d.<\/em> 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.<\/p>\nMoreover, in relation to the proof of use, article 53 of D.M. n.33\/ 2010, clause 4 specifies that it \u201chas to be relevant for the place, the time, the extension and the nature of the use of the earlier trademark\u201d,<\/em> and can \u201cconsist of documents and packaging samples, labels, price lists, catalogues, invoices, shipping or exportation documents, photos, newspaper articles, written declarations and similar materials\u201d.<\/em><\/p>\nConsidering such provisions, the Italian Patent and Trademark Office confirmed as sufficient the proof of use \u2013 for goods included in classes 9 and 28 \u2013 of the wordmark \u201cSPHINX\u201d by the company IGT Germany Gaming GMBH based on invoices, fact sheets, publication in magazines and third party\u2019s 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.<\/strong><\/p>\nAs a consequence, the prohibition stated in Law n. 96 of 2018 and any other kind of restriction \u2013 even though it doesn\u2019t represent a legitimate reason of non-use in itself \u2013 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.<\/p>\n
In fact, such remark doesn\u2019t 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.<\/p>\n
In the present proceeding, the company IGT Germany Gaming GMBH was opposing to the application for registration of the wordmark \u201cSphinx\u201d 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 \u2013 according to article 12, clause 1, letter d) of I.P.C. \u2013 with their earlier trademarks represented by the wordmark \u201cSPHINX\u201d, which was registered in classes 9, 28 and 41.<\/p>\n
In the table below, you can see a clear comparison between the trademarks and the related goods and services:<\/p>\n
![\"\"](\"https:\/\/barzano-zanardo.com\/wp-content\/uploads\/2021\/12\/Tab_EN.jpg\")
<\/p>\n
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 \u201cthey 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\u201d<\/em>, also ascertained the existence of a likelihood of confusion.<\/p>\nThe Examiner indicated that the two trademarks compared were identical, as they both are wordmarks consisting of the word \u201cSPHINX\u201d, made up of six letters, two syllables \u201cSPHI-NX\u201d and having the same conceptual profile (\u201cSPHINX\u201d is an English or French word, easily recognizable by the Italian consumer by the meaning of \u201csfinge\u201d).<\/p>\n
In the goods comparison, the Office observed an identity and similarity in relation to goods included in classes 9 and 28.<\/p>\n
Lastly, with regards to the evaluation of the relevant public \u2013 according to what already established by the previous case law \u2013 the Office considered the average consumer of the relevant category of goods\/services normally informed and reasonably observant and circumspect<\/em>, 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 \u201clarge public\u201d 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 \u2013 for article 12 I.P.C. to be applicable \u2013 it is sufficient to foresee such risk for at least one group and not necessarily for both of them.<\/p>\nTherefore, 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 \u201cSPHINX\u201d in relation to goods included in classes 9 and 28.<\/p>\n","protected":false},"template":"","area":[6],"news-argomento":[55],"news-tipologia":[43],"class_list":["post-5521","approfondimenti","type-approfondimenti","status-publish","hentry","area-ip-strategy","news-argomento-trademark","news-tipologia-insights"],"acf":[],"_links":{"self":[{"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/approfondimenti\/5521","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/approfondimenti"}],"about":[{"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/types\/approfondimenti"}],"version-history":[{"count":0,"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/approfondimenti\/5521\/revisions"}],"wp:attachment":[{"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/media?parent=5521"}],"wp:term":[{"taxonomy":"area","embeddable":true,"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/area?post=5521"},{"taxonomy":"news-argomento","embeddable":true,"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/news-argomento?post=5521"},{"taxonomy":"news-tipologia","embeddable":true,"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/news-tipologia?post=5521"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}