Does the root word “IMPER” designate the quality of the goods?

11th October 2018

In deciding three appeal cases concerning the registrability of IMPERO COUTURE, IMPERO DIAMONDS and MISS IMPERO within the context of the earlier registration of IMPERIAL, the Italian Supreme Court considered the interpretation of the phrase: “signs or indications which may serve in trade to designate the quality of the goods” and its relevance to the assessment of likelihood of confusion and overall impression.

The Italian Supreme Court Decision

The main issue for the Italian Supreme Court to consider in this case was whether there was a likelihood of confusion among signs having the common root word IMPER.

In confirming the decisions of the IPTO Board of Appeal (the Commissione dei Ricorsi), the Italian Supreme Court denied there was a likelihood of confusion between the earlier trade mark IMPERIAL and the trade mark applications IMPERO COUTURE, IMPERO DIAMONDS and MISS IMPERO. More specifically, the Italian Supreme Court held that:

• the trade mark IMPERIAL was a simple “evolution” of the root word “IMPER”; and
• the root word IMPER should be considered as simply designating the valuable nature of the products it covers (in this case, clothes and accessories),

therefore, the trade mark IMPERIAL enjoys a very low level of distinctive character.

The Italian Supreme Court held that, despite sharing the common root word IMPER, the differences between the earlier trade mark, IMPERIAL, and the marks IMPERO COUTURE, IMPERO DIAMONDS and MISS IMPERO were significant. As a result, no likelihood of confusion existed between the earlier trade mark and the applied for marks.

Comment

This decision demonstrates that in some instances, a common root word cannot be deemed to dominate the overall impression conveyed by the trade mark as a whole.

In other words, in the Italian Supreme Court’s opinion, the root word IMPER would be equivalent to expressions such as super, deluxe, elite, top, royal, prestige etc., which are expressions used in trade in a descriptive sense (for instance, to distinguish an unspecified variety of goods and services) and to magnify certain qualities of the products and services they designate.

It is still doubtful if this interpretation of the root word IMPER and its “descriptiveness” is correct. The alternative view is that it amounts to an extreme widening of the wording – “signs or indications which may serve in trade to designate the quality of the goods” – so as to restrain trade marks holders’ exclusive rights.

We’ll eagerly await future cases on this point to see if the Italian Courts will follow this decision and adopt a position that is “for-” or “against-” trade mark protection.