The European Court has ruled in case T-589/20, Calzaturificio Emmegiemme Shoes Srl v Inticom SpA.
The dispute at hand concerns a European trademark application, filed by Calzaturificio Emmegiemme Shoes Srl, for a wordmark MAIMAI MADE IN ITALY in classes:
18: “Leather and imitation leather; goods made of these materials and not included in other classes; animal skins ”;
25: “Clothing; shoes; head hats ”;
26: “Shoe Clips”.
Against this application, an opposition was filed by Inticom SpA on the ground of an earlier EU mark for YAMAMAY for the same classes of goods and services.
After some back and forth the Board of Appeal of the EUIPO confirmed partially the opposition due to the identity and similarity of the goods and a low visual and medium phonetic similarity of the signs.
The letters Y and I are pronounced and sound similar to most of the languages in the EU.
The part MADE IN ITALY in the mark applied for is not distinctive because indicates the geographic origin of the goods.
Conceptual assessment between the marks is not possible because they don’t have a specific meaning.
In addition, the owner of the earlier mark proved successfully genuine use of its mark in the EU.
The decision was appealed but the European Court upheld the EUIPO’s conclusions.