Supreme Court rules on confusion between similar marks for different goods

The Italian Supreme Court has held that use of a similar trademark for goods in a different class of the Nice Classification might be infringing where consumers are misled into believing that the goods originate from the same source (Case 3639/09, November 12 2008, published on February 13 2009).

Kelemata SpA, a leading Italian cosmetics company, owned various trademarks including the word 'Venus' for cosmetics in Class 3. Erbavoglio SAS, a well-known Italian producer of herbal products, owned the trademark VENUS IV for goods in Class 5. Kelemata brought an action for trademark infringement against Erbavoglio.

Before the Court of Turin, Erbavoglio argued that the goods sold under the trademarks VENUS and VENUS IV belonged to different categories under the Nice Classification. Therefore, Erbavoglio claimed that there was no trademark infringement or unlawful conduct under the Unfair Competition Law, since there was no likelihood of confusion among consumers. The court upheld Erbavoglio’s view, observing that the categories of goods in question were different with regard to both the ingredients used and the target customers. In addition, the court rejected Kelemata's argument that the VENUS mark was well known, which would have led to greater protection of the mark.
The Court of Appeal affirmed the decision of the first instance court. It stated that there was no likelihood of confusion among consumers because the marks were used for goods belonging to different classes. In reaching its decision, the court focused on the distinction between 'strong' and 'weak' brands. The court held that strong brands may be protected against use of similar signs for both identical and similar products. In contrast, weak brands, even if well known, may be confused with strong brands. 
On appeal, the Supreme Court held that a likelihood of confusion among consumers could not be excluded despite the fact that the marks covered goods in different classes. The court pointed out that the marks were both used for non-medical beauty and health products. Therefore, the needs satisfied by the sale of the goods and the types of distribution channels were similar, and consumers might be misled into thinking that the goods originated from the same source. The court believed that goods sold under the VENUS IV mark might easily be perceived as an upgraded version of the Venus products.
The Supreme Court thus overturned the decision of the Court of Appeal and held that infringement had occurred. 
Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan

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