“BeA legami preziosi” does not infringe the “legami” trademark, says the Milan IP Court

On 14 May, Business Chamber “A” of the Milan court issued a decision in interim injunction proceedings on the infringement of the registered trademark “legami”, known in particular for stationery products, by the trademark “BeA legami preziosi”, registered at a later date and used for jewellery. The appointed judge, having ascertained in the first place that the enforced trademark “legami” had been registered and is being used for pendants and jewellery, finally ruled out its infringement by the later sign, based on the assessments summarised below.

The decision in question first stated that the infringement of the earlier trademark must be assessed on the basis of Article 20(1)(b) IP Code, according to which the holder of a trademark has the right to prevent all third parties from using in the course of trade “a sign identical or similar to the registered trademark for identical or similar products or services, where, because of the identity or similarity between the signs and the identity or similarity of the goods or services, there exists a risk of confusion on the part of the public, which may also consist in a likelihood of association between the two signs“. Hence, the judge observed, the assessment of the likelihood of confusion “implies an interdependence between the factors taken into account, in particular the similarity between the trademarks and the similarity of the goods. Thus, a lesser degree of similarity between the trademarks may be offset by a high degree of affinity between the products and vice versa“.

As for the similarity of the goods, the judge stated that, although being of the same kind (key rings, necklaces with pendant, jewelleries), they are:
– aimed at a different market: young people in one case, mothers and children in the other;
– not interchangeable, in the sense that the consumer does not indiscriminately acquire the one or the other, both for the reason mentioned above and due to the different prices;
– distributed through different channels: stationers in one case, jewellers and children’s shops in the other.

Moving on to the comparison of the signs, the decision highlighted “a certain distance between the two trademarks from both the semantic and phonetic ( … ) viewpoints, and the visual viewpoint, as the defendant’s trademark is also made of an important graphical part ( … ) the peculiarity of which equally captures the public’s attention, diluting the attractiveness of the specific term disputed“.

The judge therefore excluded any likelihood of confusion, and rejected the motion of the proprietor of the “legami” trademark, which had requested that the use of the defendant’s trademark be enjoined.