The Italian Court of Cassation protects K-WAY’s coloured bands

The Italian Court of Cassation, with decision No. 5491 of Feb. 18, 2022, ruled in favour of the protection of K-Way’s “coloured stripe” figurative trademarks depicted below:

Unregistered “coloured stripe” trademark : three vertical bands in the following colours: yellow, orange and navy blue

EU registered trademark: five parallel vertical bands of various dimensions, in the following colours: navy blue, orange, yellow, orange and navy blue

The dispute was between Basic Net S.p.A. and Basic Italia S.p.A. (collectively “Basic”) on the one hand, respectively owner and licensee of the well-known brand K-Way, and G. A. S.p.A. on the other hand. The original case was brought before the Court of Turin  against G. A. S.p.A for marketing products bearing coloured bands in the alleged infringement of the trademarks in question.

G.A. S.p.A. had applied to the Court of Turin, by way of a counterclaim, for a declaration that Basic’s trademark registration was null and void due to a lack of distinctiveness. For the same reasons, it also contested the existence of unregistered trademark rights.

After losing in both the first and second instance proceedings, G.A. decided to file an appeal before the Supreme Court.

According to G.A., the Court of Appeal had not taken into account the fact that the coloured stripe in question, in a sector such as clothing, which is often characterised by stripes, would certainly be perceived by the public as a merely decorative element and not as a distinctive sign.

However, the Court of Cassation concluded that the Court of Appeal had duly examined G.A’s argument., correctly rejecting it based on the criterion set by the EU Court of Justice (Case C-49/02) on the protectability of colour combinations as a trademark: these are protectable if the combination of colours is repetitive and constant over time, so as to allow consumers to perceive the relationship between the product and the manufacturer to which that specific stripe refers.                             

G.A. then argued that the Turin Court of Appeal had erred in finding that the trademark had acquired distinctiveness on account of “secondary meaning” thanks to the long-standing, constant and widespread use of the sign, without having verified whether the public actually associated it with Basic. In this regard, G.A. insisted that the mark’s distinctiveness and the public’s perception of association  could not be considered proven because no demoscopic investigations had been  provided to confirm this. In reply, the Court of Cassation reiterated that in the current procedural system, which is marked by the principle of free conviction of the judge, the decision could be based on any possible means of evidence. In particular, demoscopic investigations constitute only one of many means of evidence that the Judge may -but need not- use, as they are not a necessary tool for proving the existence of the trademark’s distinctiveness.

Having confirmed the validity of the distinctive signs in dispute, the Court finally reiterated that the long-standing principle that the assessment on the likelihood of confusion between similar signs must be made by the judge through a global and synthetic examination, taking into account, in addition to the purely graphic and visual aspects, the reputation of the mark as well as the degree of similarity between the products.

The Court of Cassation therefore upheld the Court of Appeals’ findings, finding that G.A.’s stripes were likely to mislead average consumers into mistakenly believing that the products offered were traceable to Basic or even that co-marketing activities were taking place between the two companies.

For the above reasons, the Court dismissed the appeal resulting in final confirmation of the appeal decision, ordering G.A. S.p.A to pay the counterparty’s legal fees.