By decision No. 49/22 filed on 16 May 2022, the Board of Appeal (Commissione dei Ricorsi) upheld appeal No. 7852 lodged by LGV Avvocati on behalf of the Swiss bank VZ Depotbank AG and annulled the earlier decision of the Italian Patent and Trademark Office (UIBM) refusing protection to the trade mark “VZ PORTALE FINANZIARIO” for financial services in Class 36 of the Nice Classification.
Background
In 2019 the UIBM refused protection in Italy to the international registration “VZ PORTALE FINANZIARIO” for the financial and insurance services in Class 36, considering the mark descriptive of the services claimed in that class and therefore devoid of any distinctive character under Article 7 of the Italian Industrial Property Code.
LGV appealed against that decision to the Board of Appeal.
The appeal before the Board of Appeal
LGV argued that the UIBM had wrongly considered “PORTALE FINANZIARIO” to be the dominant element of the word mark, without taking into account the acronym “VZ” at the beginning of the sign.
The dominant – and distinctive – part of the sign should instead have been identified in the acronym “VZ”, given its position at the beginning of the mark and because it has for years identified the activities of the well-known applicant VZ Depotbank, besides having no meaning evocative of financial services.
The decision of the Board of Appeal
By decision delivered on 28 February 2022 and filed on 16 May 2022, the Board of Appeal endorsed the arguments put forward by LGV Avvocati, finding the UIBM’s earlier refusal to be wrong.
According to the Board, “as the appellant rightly claims, it is precisely the acronym ‘VZ’ in the sign that must be considered the dominant (and distinctive) part of the sign”.
The Board further stated that “once the acronym ‘VZ’ has been identified as the dominant element of the mark, the distance in meaning between the expression ‘VZ’ and the goods/services it designates is evident in the eyes of Italian consumers, which demonstrates, also from a product-market perspective, that the mark clearly meets the minimum requirements laid down in Article 7 of the Industrial Property Code for registration”.
The Board itself described the case as a “novelty” among the precedents it had examined.
Alessia Asaro
