The protection of patronymics trademarks in the wine sector: when reputation hinders the coexistence of identical patronymics

The case originates from opposition by the wine producers Mr. Federico and Mr. Stefano Vacca to the application for the registration of a national figurative trademark, filed by the agricultural company “Vacca Francesco & Mario di Vacca Saverio”, located in the same geographical area.

The opposers, who were owners of three earlier national patronymic trademarks, believed that the application filed before the Italian National Office for Patents and Trademarks (UIBM) by the agricultural company for the same products could create confusion in the minds of the consumers.

According to the opposers, if the contested trademark had been registered, there would have been a risk of association between the goods of the two wineries. That is because the “VACCA” trademarks are well-known in the wine sector and because the signs of the parties are similar from a phonetic, visual and conceptual point of view.

The agricultural company contested the existence of a risk of confusion, underlining that, on one hand, the presence of the first name “Saverio” and the figurative element represented by a yoke differentiated the marks and that, on the other hand, the patronymic had a lesser distinctive value in the wine sector as it is often used by entrepreneurs.

The UIBM, which was called upon to decide the matter, considered that there was a low-medium degree of visual similarity, a medium degree of phonetic similarity and a more evident degree of similarity at a conceptual level due to the presence of the same surname. The Office classified the trademarks “VACCA” as strong, but at the same time rejected the opposition because the substantial differences between the signs have been considered sufficient to avoid a risk of confusion amongst consumers.

Mr. Federico and Mr. Stefano Vacca appealed the decision before the Board of Appeal, claiming that the UIBM had wrongly compared the trademarks.

The Commission upheld the appeal and declared that the UIBM contradicted itself when it has affirmed the well-known reputation of the appellant’s trademark and at the same time has devalued the identity of the patronymic. In a similar case, “Zago vs. Luigino Zago” (Opposition Division Euipo Opposition No. B 2 779 034), Euipo had held that the conflicting marks were confusable because the patronymic element had a clear and immediate association with the origin of the goods. The Italian Office, while admitting that companies in the wine sector often use patronymic designations, considered that this is not relevant in all those cases where the comparison must be made with a strong trademark which would increase the risk of association of the products for consumers.