Risk of confusion test clarified in ACQUA DI PARMA Case

In Acqua di Parma v Le Gioie sas di Caiafa Claudio (RG 19918/2001), the Court of Naples has issued guidance on the test for likelihood of confusion under Italian law.

Acqua di Parma, an Italian perfume manufacturer that owns a registration for the mark ACQUA DI PARMA, brought a trademark infringement action against two companies based in Naples - Le Gioie sas di Caiafa Claudio and Bio Medicale di Pescitelli Michele. Acqua di Parma argued that the defendants had infringed its rights by manufacturing and selling products bearing an ACQUA DI PARMA mark.

The Court of Naples agreed with Acqua di Parma, concluding that there was a likelihood of confusion between the defendants' products and those produced by Acqua di Parma as a result of their use of the ACQUA DI PARMA mark. In coming to this conclusion, the court took the opportunity to issue guidance on the test for likelihood of confusion under Italian law. Some of the most important points it made in relation to the test are the following:

• Courts must take the relevant trademark's context of use - and not just the terms set out in the registration - into consideration when assessing whether it requires protection. The context to be considered can include connected advertising and the reputation of the mark.
  
  
• In accordance with a Supreme Court ruling issued on February 9 1995 (Case 1473), the courts should analyze the relevant trademark as a whole, rather than make a detailed examination of the separate elements making up the mark. The courts should also attempt to assess the mark from the point of view of the target consumers.
  
  
• Any assessment should take into account the fact that trademarks no longer have the sole purpose of indicating the origin of a particular product or service. Marks now have value that is separate from the products or services to which they relate. This value stems, in part, from the fact that marks have the power to attract the interest of consumers. Under Italian law this power of attraction is now protected by the concept of 'risk of association', which should be included within the test for risk of confusion.
  
  
• Confusion that occurs before sale should be included within the meaning of risk of confusion.

Pietro Pouchè, McDermott Will & Emery - Carnelutti Studio Legale Associato, Milan