Vademecum on the Assessment of the Likelihood of Confusion Between Trademarks

Italian Supreme Court Outlines Criteria to Conduct a Proper Likelihood of Confusion Test

On 27 May 2016, the Italian Supreme Court released a judgement recalling with clarity and completeness most of the consolidated principles concerning the assessment of the likelihood of confusion between trademarks. This judgement is to become a good instrument for professionals when addressing to the topic at issue as well as a reference for future decisions of the Courts of merit.

The court outlined the following principles:

1. On the overall impression of the consumers:
   the assessment of the likelihood of confusion must be grounded on the overall impression resulting from the comparison between trademarks, taking into consideration, in particular, their distinctive elements and observing the consumer’s perception of the signs.
2. On consumers’ perception:
   the consumer usually looks at the trademark as a whole and does not conduct any analytic evaluation of each element of the trademark; moreover, the consumer usually chooses the product by way of comparing the one he is seeing with the imperfect recollection of the other one.
3. On the trademark:
   likelihood of confusion cannot be excluded when a trademark is included in another complex trademark, even though other different denominative elements (such as the name of the manufacturer) are included.
4. On the targeted consumers:
   the likelihood of confusion must be assessed in accordance with the “average consumer” point of view, bearing also in mind the target of clients the product is addressed to and the usual approach of such consumers to the specific product (i.e. attention to details of consumers of the luxury sector is usually higher compared to the attention of purchasers of consumer goods).
5. On distinctiveness:
   the more distinctive is the previous sign (conferring reputation to the trademark), the more there exists the likelihood of confusion, and letting the less-known product taking unfair advantage of the reputation of the well-known product and sign.

By: Alessandra Feller and Alessia Castelli