Diesel vs. Calvin Klein: the distinctiveness of the stripe as a trademark
Diesel has been marketing casual blue jeans since the 1980s, which, in addition to being characterised by the ageing and abrasion of the fabric, also have a slanting label positioned on the fifth front-side pocket of the trousers. The label, called a stripe, is represented by a rectangular strip of fabric and is generally lighter in colour than the jeans. Consequently, in 2018, Diesel decided to file in Italy two trademark applications concerning the stripe, inferring that the sign was already registered as such in the USA and Colombia, while in the EU it had only been registered in the version that also contained the word Diesel.
In 2017 Diesel became aware that the well-known fashion brand Calvin Klein (together with the Italian company CK Stores) had adopted as a label a strip of fabric similar in shape and positioning to its stripe, although placed horizontally and not at an angle. For this reason, Diesel sued before the Court of Milan the two competitors claiming the infringement of its exclusive rights on the stripe as a distinctive sign (at the time of the events the trademarks had not yet been registered) and requesting the order of the two defendants (1) an injunction against the use of signs identical or similar to the "Diesel" stripe referred to in the two trade mark applications (granted during the course of the proceedings); (2) an order to withdraw from the market and to destroy the products of the opposing parties; (3) compensation for damages and the retroversion of profits made; (4) publication of the judgment and the fixing of a penalty.
Calvin Klein objected to the invalidity of the opposing marks, claiming that the application for registration had been filed in bad faith for the sole purpose of instituting the proceedings, and alleging the lack of distinctiveness of the Diesel stripe, considering it to be merely an ornamental element already widely used in the clothing sector.
In its decision of December 2020, the Court of Milan dismissed both the main claims and the counterclaim, finding, on the one hand, that Diesel's initially de facto signs and then registered were valid and protectable: according to the judge, the mark was also distinctive considering the particular diagonal inclination of the label - not replicated by any competitor in the sector - and the positioning on the front pocket of the jeans. With regard to the objection concerning the bad faith registration of the mark, the Court of Milan pointed out that the filing of the trademark application did not change the general framework of the case, which was based on the fact that the sign had been used as a de facto mark for more than ten years.
The Court of Milan then rejected the claims of infringement and unfair competition brought by Diesel, finding that the main feature of Diesel's mark, namely the diagonal position of the stripe, was not present on the defendants' label.
Diesel appealed this decision before the Court of Appeal of Milan. The appellant Calvin Klein requested the rejection of the main appeal and, by way of cross-appeal, the reform of the first instance judgement with reference to the claims of invalidity of the Diesel trademarks.
At the outcome of the appeal, with a judgment of 16 June 2023, the Court first of all dealt with the preliminary issue relating to the invalidity of the appellant's trade mark, clarifying how Calvin Klein had not discharged its burden of proving the lack of validity requirements. In fact, the documents on file showed that the use of a narrow label oriented diagonally to the upper edge of the fifth pocket of the jeans is a characteristic element of the Diesel fashion house. In addition, the appellant proved that the label has been presented over time both with the Diesel word sign and alone, thus proving that the stripe is the only real distinguishing element, since it makes the product unusual and different from industry standards. The Court of Appeal also upheld the first instance ruling on the absence of bad faith in Diesel's application for registration of the trade marks.
With regard to the main appeal, the second instance judge confirmed the correctness of the work of the Court of First Instance, which had investigated all the characteristics of the Diesel stripe, qualifying as its only true distinctive element the diagonal orientation with respect to the edge of the pocket. In fact, even an analysis of the description of the trade mark in the application revealed the absence of any kind of reference to the length, height and difference in colour with the rest of the product.
It is settled case-law that confusability between trade marks must be ultimately assessed by taking into account all relevant factors of the case, examined according to the perception of the public and having as reference the average reasonably observant and circumspect consumer. Through this comparison, it was correctly held that the only distinguishing feature of Diesel's jeans is the diagonal stripe, a feature absent from the label of the defendant Calvin Klein. Moreover, even taking into account the additional features, further divergent elements would have emerged such as the position of the label on the parties' products, the presence of rivets to demarcate the stripe and the use of a colour identical to that of the product in Calvin Klein's jeans.
It must also be considered that the garments at issue are sold either in dedicated shops or in clearly delimited areas of department stores and, consequently, it is impossible for consumers to confuse one brand with another.
For this reason, the Court of Appeal of Milan upheld the decision issued at first instance and rejected both the main appeal brought by Diesel and the cross-appeal brought by Calvin Klein.
