The principle of neutralisation: The “Gianfranco Ferrè” trademark

26 Jun 2026

UIBM Board of Appeal, 17 March 2026

The UIBM Board of Appeal has recently ruled on the relevance of the conceptual divergence in the assessment of the likelihood of confusion between trademarks, providing an interesting application of the principle of neutralisation.

In the case at hand, Gianfranco Ferrè S.p.a. DMCC had filed an application for the registration of a national figurative trademark consisting of the well-known patronymic “GIANFRANCO FERRE’”, structured on two levels and featuring a specific graphic layout. This application was opposed by a Turkish company, owner of the prior European Union word mark “FERRE”, registered for products largely falling within the same classes. The opposition was based on Article 12, paragraph 1, letter d) of the Italian Industrial Property Code and, therefore, on the alleged existence of a likelihood of confusion or association between the two trademarks, also considering the identity or the high degree of similarity of the goods and services involved.

Initially, the Italian trademark office (UIBM) had partially upheld the opposition, grounding its decision on the coincidence of the element “FERRE”, which was deemed to be the dominant component of the “GIANFRANCO FERRE ’“trademark. However, the Board of Appeal overturned this decision, ruling out the existence of a likelihood of confusion between the two signs.

The ruling revolves around the application of the principle of neutralisation, according to which a high conceptual divergence can neutralise any visual or phonetic similarities between the signs. While acknowledging that the presence of the common term “FERRE” could be deemed a contact point between the two marks, the Board however considered the overall perception of the GIANFRANCO FERRE’ trademark to be decisive, as it immediately recalls the well-known fashion designer and is perceived by the public as a unitary reference to a specific person.

According to the Board, the strong conceptual characterisation is sufficient to distinguish the GIANFRANCO FERRE’ trademark application from the prior trademark “FERRE”, which, by contrast, was considered to lack, in itself, any autonomous specific meaning for the public. This divergence was deemed sufficient to neutralise any similarities found on the other levels of comparison, in line with the principles established by EU case law and with the well-known Ruiz Picasso case.

Also of interest is the passage concerning the identification of the core of the sign: the Board observed that the element “FERRE” cannot be isolated in a vacuum, neglecting the distinctive weight of the first name “GIANFRANCO”, which indeed contributes substantially to the overall perception of the trademark by the public.

The ruling therefore highlight  the principle according to which the consumer perceives the trademark as a whole and confirms how, in the presence of a strong conceptual divergence (probably strengthened in the case at issue by the of the patronymic), the likelihood of confusion can be significantly mitigated or even ruled out, even when certain visual and/or phonetic similarities exist.

Edoardo Episcopo