Likelihood of Confusion in Italy: How CJEU Precedent Shapes the Assessment (Article 12 CPI)

The assessment of likelihood of confusion is central to Italian trade mark law, governing both opposition proceedings and invalidity actions. Under Article 12 of the Industrial Property Code (CPI), a mark cannot be registered if it is identical or similar to an earlier mark and covers identical or similar goods or services such that there exists a likelihood of confusion on the part of the public, which may include the likelihood of association. Italy’s assessment follows CJEU case law closely, applying the well-established European framework for comparing marks across visual, phonetic, and conceptual dimensions.

The Legal Framework: Article 12 CPI

Article 12 of the CPI sets out the relative grounds for refusal and invalidity. The key provisions are:

• Article 12(1)(c): A mark is invalid if it is identical or similar to a mark already registered by a third party for identical or similar goods/services, where there exists a likelihood of confusion, including a likelihood of association.
• Article 12(1)(d): A mark is invalid if it is identical to an earlier mark registered for identical goods/services (the double-identity ground, where confusion is presumed).
• Article 12(1)(e): A mark is invalid if it is identical or similar to an earlier mark with reputation (rinomanza), even for dissimilar goods/services, where use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

Because the UIBM does not examine relative grounds ex officio, Article 12 is invoked primarily in opposition proceedings, administrative invalidity proceedings, and court actions. The assessment in all these contexts follows the same analytical framework, derived from CJEU jurisprudence.

The CJEU Framework Applied in Italy

Italian examiners at the UIBM, the Board of Appeal, and Italian courts apply the global assessment of likelihood of confusion established by the CJEU in landmark cases such as SABEL v Puma, Canon, and Lloyd Schuhfabrik. The assessment involves three interrelated analyses:

1. Comparison of the goods and services: The first step is to compare the goods and services covered by each mark. Following the Canon decision, the comparison considers factors including the nature, intended purpose, and method of use of the goods, whether they are in competition or complementary, their distribution channels, and the relevant public. Goods in the same Nice class are not automatically similar, and goods in different classes may be found similar.

2. Comparison of the signs: The marks are compared across three dimensions:

• Visual similarity: The overall visual impression of the marks, including their length, structure, sequence of letters, and graphic presentation. For composite marks, the comparison considers the relative weight of word and figurative elements.
• Phonetic similarity: How the marks sound when spoken. Italian pronunciation rules apply, and the assessment considers how the average Italian consumer would pronounce the marks. For foreign-language marks, the Italian phonetic rendering is relevant.
• Conceptual similarity: The meaning conveyed by each mark, including in Italian translation. Two marks that are visually and phonetically different may still be conceptually similar if they convey the same idea (e.g., “Sun” and “Sole”).

3. Global assessment of confusion: The likelihood of confusion is assessed globally, considering the interdependence principle: a greater degree of similarity between the goods may compensate for a lesser degree of similarity between the signs, and vice versa. The assessment also considers:

• The distinctive character of the earlier mark (inherent or acquired). Marks with higher distinctiveness enjoy a broader scope of protection.
• The relevant public’s level of attention. For everyday consumer goods, the average consumer’s attention is lower, making confusion more likely. For specialised or expensive goods, the consumer is more attentive.
• The dominant and distinctive elements of each mark. In composite marks, the comparison focuses on the elements that carry the most weight in the consumer’s perception.

The Role of the Average Italian Consumer

The assessment is always conducted from the perspective of the average consumer of the goods or services in question in Italy. This consumer is deemed to be reasonably well-informed, observant, and circumspect, but with imperfect recollection — meaning consumers rarely have the opportunity to compare marks side by side and rely on their imperfect memory of the marks encountered.

Practical Application in Italian Proceedings

In UIBM opposition proceedings, the Opposition Division applies the CJEU framework methodically. The analysis typically follows a structured sequence: first, comparison of goods/services; second, comparison of signs (visual, phonetic, conceptual); third, global assessment of confusion considering all relevant factors. Italian courts — the Tribunale delle Imprese and appellate courts — apply the same framework, with the additional ability to hear witnesses and consider broader evidence.

Strategic Recommendations

• Conduct a thorough pre-filing similarity analysis: Before filing in Italy, compare your proposed mark against the Italian register, the EUTM register, and international registrations designating Italy across all three dimensions (visual, phonetic, conceptual).
• Consider Italian-language conceptual equivalents: Two marks that appear different in English may be conceptually similar when translated into Italian.
• Assess the goods/services broadly: Remember that goods in different Nice classes can be found similar if they share nature, purpose, distribution channels, or are complementary.
• Argue distinctiveness in opposition: If defending an application against opposition, demonstrate that the earlier mark has low inherent distinctiveness, which narrows its scope of protection.
• Invoke proof of use: In opposition proceedings, if the earlier mark has been registered for more than five years, require the opponent to prove genuine use. If use cannot be proven, the opposition fails.

Common Mistakes

• Focusing on only one dimension of similarity: Similarity in even one dimension (visual, phonetic, or conceptual) can be sufficient for a finding of confusion, particularly when combined with similarity of goods.
• Ignoring the interdependence principle: High goods similarity can compensate for lower mark similarity, and vice versa.
• Assuming consumers compare marks side by side: The imperfect recollection standard means that even marks with visible differences may be confused when consumers rely on memory.
• Neglecting Italian phonetics: Foreign-language marks are assessed based on how Italian consumers would pronounce them.

Key Takeaway

Likelihood of confusion in Italy is assessed following the CJEU’s global assessment framework, considering visual, phonetic, and conceptual similarity of the marks, the similarity of the goods/services, and the interdependence between these factors. Italian examiners and courts apply this framework rigorously, consistent with European standards. For applicants and opponents alike, a structured three-dimensional similarity analysis — conducted from the perspective of the average Italian consumer with imperfect recollection — is essential for predicting outcomes.