The risk of confusion between weak trademarks: UIBM Appeals Board decision in the VAPOSTORE / ESVAPO STORE case

With decision no. 57 of April 3, 2025, the Board of Appeals of the Italian Patent and Trademark Office (UIBM) ruled on, and rejected, an opposition to the registration of a trademark deemed weak and, therefore, of limited protection.

The dispute arises from the opposition filed by the French company Vapostore, owner of the European figurative trademark bearing the same name, against the application for the registration of the national word mark “ESVAPO STORE” for products partly falling within the same Nice Classifications.

The UIBM had rejected the opposition, arguing that there was no likelihood of confusion between the two signs. Upon appeal by Vapostore to the Board, the rejection was confirmed with the decision under comment.

This decision revolves around the concept of a weak trademark. In fact, the signs at issue are both considered weak as they are largely descriptive, and refer to the neologism “to vape,” defined by the Accademia della Crusca as the “act of smoking an electronic cigarette”; moreover, both use the term “store,” an English word now part of common usage, meaning “shop, retail outlet.

That said, the Board recalled that a weak trademark, although validly registered, enjoys limited protection, so that the likelihood of confusion for consumers - and thus interference between the signs - can be excluded even where only modest differences exist with the subsequent mark; this, according to the established case-law expressed, among others, by the judgment of the Court of Cassation no. 5924/1996.

Additionally, the role played by the relevant public and, in particular, the level of attention in their purchasing choices is considered.  In fact, the Board points out that although in general the level of attention in purchasing is higher for expensive and durable goods and lower for cheaper ones, often bought impulsively, the consumers of smoking products is peculiar: the average consumer in this sector makes considered purchasing choices, developing strong brand loyalty.

As a result, the Board notes the absence of an actual likelihood of confusion for the public: the similarity between the signs – although medium-high – is not sufficient to mislead the consumer, who is attentive and loyal to the chosen brand.