On 16 January 2020 the Opposition Division of the Italian Patent and Trademark Office (UIBM) accepted the opposition filed by Spin Master Italia against the application for registration of the Italian mark "Rustiko", filed to distinguish a board game, the rules of which are completely identical to those of Risiko but set in the Abruzzo region of Italy.
Comparison of the two trademarks
After a failed attempt at conciliation, Spin Master assisted by Studio GLP and starting from the assumption that its own mark "Risiko" enjoys an increased distinctive capacity thanks to the intense use it has seen for over 40 years, highlighted the risk that, precisely due to the high similarity of the marks, a risk of association between the marks could arise, leading consumers to think that the mark opposed characterized a "new" product from Spin Master if not, even, a regional Italian version of the famous board game "Risiko".
The opposite party considered the alleged similarity between the marks totally unfounded, maintaining there was a clear difference from a visual, phonetic and conceptual point of view.
The Opposition Division considered the "Rustiko" and "Risiko" marks to be highly similar from the visual point of view, since the marks differ only in the letters "U" and "T". However, for the purpose of greater distinctiveness of the mark opposed, it did not consider the figurative elements relevant, since they do not significantly alter the consumer's perception.
This high degree of similarity was also found at the phonetic level, since the sound, rhythm and intonation of the words is almost the same. In addition to the above, the Opposition Division recognized the increased distinctiveness of the "Risiko" mark for "toys", deriving from the intensive use that has been made of it in Italy in the last 40 years, also by virtue of the actual volume of sales and actual advertising investments.
For all the reasons above, and considering that there could be a real risk of association for consumers, that is, that consumers could be led to believe that the products of the mark opposed could come from the same company as the previous mark or from companies associated with it, the Opposition Division upheld the opposition by ordering the total rejection of the application for registration of the "Rustiko" mark, ordering the applicant to repay the costs.