Differing conclusions reached in surname mark rulings

The European Court of First Instance (CFI) has issued two rulings in seemingly analogous cases dealing with the likelihood of confusion in marks composed of a forename and a surname. In Fusco v Office for Harmonization in the Internal Market (OHIM), the CFI held that ENZO FUSCO and ANTONIO FUSCO were confusingly similar. In Sergio Rossi SpA v OHIM, the CFI ruled that SISSI ROSSI and MISS ROSSI were not confusingly similar.

In the first case, Vincenzo Fusco sought to register ENZO FUSCO as a Community trademark for, among other things, goods in Classes 18, 24 and 25 of the Nice Classification. Antonio Fusco International, the owner of the Community trademark ANTONIO FUSCO registered in the same classes filed an opposition claiming that ENZO FUSCO and ANTONIO FUSCO were confusingly similar. The Opposition Division rejected the application and the Board of Appeal dismissed the appeal holding that the presence of the name Fusco in both marks gave rise to a likelihood of confusion. In appealing to the CFI, Fusco claimed, among other things, that the Board of Appeal had erred in considering that the surname is always the dominant and distinctive element of a mark consisting of a forename and surname.

The CFI upheld the board's decision. It found that the marks resemble each other because of the common surname Fusco and differ because the forenames Enzo and Antonio refer to two different persons. The crux of the dispute was whether different forenames would prevent the likelihood of confusion. The assessment, said the CFI, must be made according to the same principles as with other types of sign. It further explained that there may be a difference of perception in different EU countries regarding signs made up of personal names, but Italian case law (Italian consumers being the relevant target public here) generally attached greater distinctiveness to the surname. In addition, the CFI held that Fusco is a relatively uncommon surname and therefore particularly distinctive, especially since neither party disputed that the forenames Enzo and Antonio were relatively common. Accordingly, the CFI found the marks confusingly similar and upheld the opposition.

The second case stemmed from the application by Sissi Rossi Srl to register the word mark SISSI ROSSI in Class 18 for leather goods and bags. Sergio Rossi SpA, the owner of international and Italian trademarks MISS ROSSI in Class 25 for footwear, opposed the application on the basis of its earlier marks. The Opposition Division accepted the opposition, holding that the goods and marks in question were confusingly similar. The Board of Appeal allowed Sissi Rossi's appeal, finding that the marks were only slightly similar.

On appeal to the CFI, Sergio Rossi argued that shoes and handbags are complementary and therefore similar because of (i) their aesthetic and decorative purpose in women's clothing, and (ii) the fact that both are often made of leather and bought as a set. Sissi Rossi contended that the mere fact that consumers buy matching shoes and bags does not make them similar goods in the meaning of trademark law. Regarding the similarity of signs, Sergio Rossi submitted that the fact that Rossi is a common surname does not preclude it from being distinctive, whereas Sissi Rossi argued that since Rossi is such a common name the emphasis should be on the examination of the forenames.

The CFI disagreed with Sergio Rossi, holding that (i) the primary purpose of bags and shoes is different (dressing feet as opposed to carrying objects), and (ii) the secondary aesthetic purpose does not warrant the conclusion that they are to be considered similar. The CFI conceded, however, that due to the fact that bags and shoes are made of the same raw material and sometimes sold in the same outlets, the differences between the products could not by themselves rule out the possibility of a likelihood of confusion. Therefore, the CFI proceeded to examine the similarity of the marks.

The CFI rejected Sergio Rossi's argument that the term 'miss' and the name Sissi should be considered similar because Miss Rossi can potentially refer to a woman called Sissi Rossi. The court held that 'miss' and Sissi are phonetically, visually and conceptually different. Consequently, it was decisive whether the name Rossi was (i) distinctive, and (ii) the dominant part of the marks. However, the court stopped short of deciding that a surname is automatically the dominant and distinctive part of a mark. It merely noted that Sergio Rossi had challenged the Board of Appeal's view that 'miss' and Sissi were dominant, but had not claimed that Rossi was the dominant part of the marks. In the absence of positive claims regarding the distinctive character of the name Rossi, the court held that the degree of similarity was average, if not slight, and further, that taking into account that Rossi was a relatively common surname in Italy, there was no likelihood of confusion.

The distinguishable facts warranted the CFI's opposite conclusions in these cases. In the first case, there was a likelihood of confusion primarily because of the uncommon and therefore distinctive nature of the surname Fusco. In the second case there was no likelihood of confusion because the opposite was true in respect of the surname Rossi. Another clear point of distinction is that, in the second case, the goods were arguably relatively different and therefore the similarity of the marks would have had to be greater for the court to make a finding of likelihood of confusion.

Erkki Holmila, Berggren Oy Ab, Helsinki