On 3 November the Italian Court of Cassation ruled in the matter of alleged infringement of a figurative trademark reproduced by a third party within a complex graphic pattern used for ornamental purposes. In particular, the Court of Cassation rejected the appeal against a second instance ruling in which the Court of Appeal of Turin – confirming an earlier decision of the first instance court – ruled out the likelihood of confusion between an Italian figurative trademark owned by Lotto Sport Italia S.p.A (consisting of the iconic double lozenge) and an allegedly identical sign serially reproduced within a graphic pattern on the surface of some clothes and bags designed by Max&Co, a brand belonging to the Max Mara Fashion Group.

The appeal lodged by Lotto was founded, inter alia, on three fundamental grounds: i) the Court of Appeal had erred in assessing the likelihood of confusion on an analytic rather than a synthetic basis because, despite the substantial correspondence between their qualifying graphic elements, it had ruled out the likelihood of confusion between the signs in comparison; ii) the Court should have assessed likelihood of confusion in the abstract rather than in context, therefore acknowledging the (alleged) objective similarity between the signs and the affinity between the relevant goods; iii) finally, the Court had erred in failing to apply the principle according to which, for the purpose of the assessment of the likelihood of confusion when a highly distinctive trademark is involved (such as Lotto’s trademark in suit), even significant variations in the infringing sign are not relevant, if the essential, ideological core of the trademark has been reproduced.

As mentioned above, the Court of Cassation rejected all the grounds of appeal.

With reference to the first two grounds of appeal, the Court ruled that – contrary to Lotto’s claim – the assessment of likelihood of confusion between the signs, “which necessarily requires a contextual examination”, had been carried out correctly, since the Court of Appeal had examined the main graphic elements of both signs from a comprehensive, not analytical, perspective, having taken into account the overall impression of both signs on the relevant public.

The Court considered it “reasonable” that the second instance judges ruled out the likelihood of confusion even in the face of the actual reproduction by Max Mara of the graphic element of the Lotto trademark, consisting of a double lozenge, on the grounds that such element “is only one of the various constitutive elements of the Max Mara sign, which was characterised also (but not only) by the serial repetition of the decoration over the surface of the relevant goods, within a complex graphic pattern that can be clearly distinguished from the Lotto trademark”.

With regard to the third ground of appeal, the Supreme Court pointed out that the Court of Appeal had indeed considered the principle of law invoked by Lotto, but had not seen fit to apply it, since it had not acknowledged the presence, in the Max Mara sign, of the ideological core of the Lotto trademark, insofar as the former was “… represented by an original graphic pattern made by the complex articulation of different geometric elements”, such to “… rule out the likelihood of confusion in the eyes of the average consumer”.