The Chinese Translation of a Registered Word Trademark can be Used as a New Figurative Trademark in Italy

On January 9, 2015, a decision of the Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi, hereafter ‘UIBM’) rejected an opposition made by Jaguar Land Rover Limited (Land Rover), in order to prevent the registration, in Italy, by China Depend Limited (China Depend) of a figurative trademark. The trademark was formed by two Chinese ideograms corresponding to the sign used in China by Land Rover to identify its activity, which once translated means ‘land’ and ‘tiger’, but allegedly commonly translated into ‘Land Rover’ ( Ideogram Trademark).

Land Rover, owner of the two Italian word trademarks ‘Land Rover’ and ‘Range Rover’ (Land Rover Trademarks), filed an opposition pursuant to Article 12, paragraph 1, letter d) of the Italian Intellectual Property Code setting forth the likelihood of confusion between similar trademarks. In particular, the provision provides that signs cannot be registered as trademarks if, at the date of the registration filing, they are similar or identical to other trademarks previously registered by third parties in the same country or are enjoying protection in the same country.

On the basis of the above mentioned rule, Land Rover stated the existence of likelihood of confusion among Land Rover Trademarks and the Ideogram Trademark.

In order to assess the above, UIBM examined the visual, phonetic, and conceptual similarity of the trademarks.

As for the visual comparison, the Land Rover Trademarks being word trademarks and the Ideogram Trademark being a figurative one, UIBM resolved that the trademarks were not visually comparable and that, in particular, the Ideogram Trademark was totally meaningless for the reference of Italian customers.

As for the phonetic analysis, UIBM stated that this was unachievable because the Ideogram Trademark was composed by two ideograms phonetically incomprehensible for the average Italian customers. Finally, as for the conceptual comparison, UIBM declared that it was not achievable, given that the Ideogram Trademark was figurative in nature and lacked a semantic meaning for the Italian customers.

While Land Rover argued that the Ideogram Trademark was comprehensible for the Italian market generally, given the significant presence of Chinese communities in Italy, UIBM concluded that the Italian market was represented by Italian customers who normally cannot understand Chinese language and, consequently, the trademarks had no common distinctive components.

In light of the above, UIBM stated that the registration of a figurative sign corresponding to the translation of another registered trademark into a language, which is not commonly known by the average customers in Italy, is not likely to cause confusion.

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