The Court of Milan has recently expressed its opinion on the protection of the shape of the well-known "Royal Oak" watch created in 1972 by the Swiss company Audermars Piguet initially protected as a three-dimensional trademark.

Audemars Piguet recorded the shape of the relative lunette as an international figurative mark and complained on a trademark counterfeiting and unfair competition case for the sale of watches marketed by the Milan based start-up “D One”.

At first, the court issued an iaudita altera parte restraining order prohibiting the future commercialization of such watches however, the court overturned its initial decision and dismissed the appeal of Audemars Piguet on the grounds that "there are numerous elements of doubt about the validity of the operated trademark", as evidenced by the fact that its registration as a Community trade mark has been denied by the competent office (EUIPO).

In particular, according to the Court, the trademark seems to lack distinctive capacity, ie the ability to "distinguish products from those of another manufacturer and, therefore, perform the function of identifying the entrepreneurial origin of the product";

Again, according to the court of Milan, the three-dimensional distinctive sign does not even seem to have acquired distinctive capacity through use (so-called "secondary meaning"), "not having been documented uniform use" of the sign itself ".

Finally, the registration of the shape in question as a trademark does not even seem compatible with the provisions of art. 9 CPI, according to which "signs constituted exclusively ... from the form that gives substantial value to the product can not be registered as a trademark".

In terms of unfair competition, the judge recalled that, to integrate the unfair competition law, the servile imitation of the product of others must "invest characteristics that are totally inexistent with respect to the function they are intended to perform", or those "arbitrary and whimsical" and "new with respect to the already known" characteristics that give originality to the product and have distinctive capacity, so that the public is led to bring them back to the company from which the product originates: only when these characteristics are concerned, servile imitation invests "elements capable of generating confusion in the public" and thus integrates unfair competition with confusion.

In this case, the judge did not recognize the existence of such an imitation, stating essentially - on the basis of what was found at the point of counterfeiting of the mark - that the imitated forms would be "structural and non-distinctive", as well as in some cases "Now acquired to the collective taste, having undergone a certain standardization", and that in any case there would be "significant differences" between the two products.