KOKITUSS infringes the OKI trademark, the IP Court of Milan states

In recent judgment no. 7204/17, the IP Court of Milan compared the well-known OKI trademark of the pharmaceutical company Dompè (the plaintiff) with the KOKITUSS, KOKIDEC and KOKIMUCIL trademarks of Pool Pharma (the defendant), concluding that the latter infringe the first.

Specifically, the Court held on the one hand, that the defendant’s trademarks had the word “KOKI” as their “heart”, “accompanied by elements which are highly evocative of the nature and destination of the drug: “tuss”, “mucil”, “dec”. It is thus evident that the fantasy term “koki” forms the ideological nucleus (so-called “heart”) in which the individualistic attitude of the signs in question are summarised, which has autonomous evocative potential in the memory of the consumers”. On the other hand, the Judges argued that the OKI sign “has no conceptual adherence or logical connection with the products that it distinguishes, being a fantasy sign, [hence] it is possible to qualify the trademark as “strong”, that is, having significant individualising power“.

Having pointed out the above, the Judges compared the trademarks and concluded that “the OKI word has a strong assonance with the KOKI word, both in terms of verbal similarity and phonetic assonance, so that the second appears almost completely superimposable on the first“. Such a similarity would not be excluded, according to the Court, by the addition of the letter K in the defendant’s trademarks: “It is indeed possible to affirm“, the Judges argued, “that the very choice of the alliteration obtained by the use of the letter “K” makes the phonetic assonance between the two signs more apparent“. Thus, the Judges concluded, “considering that all the goods in question are pharmaceutical products, destined for retail sale, it is possible to hypothesise a likelihood of confusion on the part of the public“.

The judgment also noted that the OKI brand is a trademark that enjoys a reputation and is therefore protected whenever the use of the subsequent trademark without due cause (even for non-similar products) would take unfair advantage of, or be detrimental to, its distinctive character or repute. In the present case, according to the Judges, “there is at least the risk of hooking onto the reputed sign, which results in the exploitation of the undue association that the average consumer in his purchases of non-prescription medicines could establish with the quality and repute the of the plaintiff’s products. The “OKI” brand has a strong distinctive character, being it a fanciful sign, and a remarkable power of attraction. From this distinctive capacity, Pool Pharma would take an unfair advantage, undoubtedly resulting in cost savings. At the same time, the defendant would adversely affect the competitor’s trademark, weakening its suitability to identify the products for which it was registered as coming from its holder.“