The CTM applied for is comprised of the juxtaposition of a womans name and a surname, both Italian. It is accepted in case-law that consumers will, as a general rule, attribute greater distinctiveness to the surname than to the forename. This conclusion applies to the reference public, at least the Italian, French and German public. Conceptually, the signs have a certain semantic connection since both are comprised of first names. Visually, the graphics of the contested CTM is not particularly distinctive. The capitalisation of the second ‘P in the term ‘Prata reinforces the perception of this term as a surname and, as such, as the most distinctive element of the mark. Since the most distinctive component of the contested sign is almost identical to the only term which constitutes the earlier one, the signs have a visual degree of similarity which is not negligible. Aurally, the degree of similarity is average, since the pronunciation of the most distinctive component of the contested sign is almost identical to that of the earlier mark. In conclusion, the signs have a certain degree of similarity. Since the contested G&S in Classes 18, 24 and 25 are identical, there is LOC. It cannot be excluded that the relevant consumer may perceive the CTM applied for as a special product line originating from the undertaking which is the proprietor of the earlier mark. As to the alleged ‘coexistence agreement between the parties it would be sufficient to note that this question would relate only to Italy. In any case, the exchange of correspondence between the parties, of which the applicant submitted copies in order to establish the alleged conclusion of a ‘coexistence agreement, concerns a different Italian trade mark of the applicant, consisting in a figurative element representing the stylised bust of a woman, coupled with the name ‘PAOLA PRATA. 13. The appeal is dismissed.

Comparison of Trademarks