Issues Concerning Italian Trademarks Filed In Chinese Characters: The Case

With opposition No. 442/2012, the Company Jaguar Land Rover (formerly known as Land Rover) has contested the registration of a figurative mark consisting of two Chinese characters “路虎”, of which application was filed on November 31, 2011 by the Company Depend China Limited . According to the opponent, the real meaning of such contested two Chinese characters is “Land Rover”: in fact, the same Chinese characters are used by Land Rover to identify themselves in China. Nevertheless, the Italian PTO (UIBM), with Decision No. 123/2014, has rejected the opposition in its entirety, as it has found no likelihood of confusion between the marks “Land Rover” and “路虎”. In taking the decision at issue, the Examiner, pointing out that the relevant public is composed by Italian consumers, that, normally, do not know the Chinese language, has considered the mark “路虎” not as a word mark, but rather as a figurative mark. Although the decision at hand seems to be well-argued, the practical result coming from it gives rise to more than one concern.