THE TURIN COURT ON THE PROTECTION OF K-WAY COLORFUL BANDS.

The Turin Court recently ruled on the case brought by Basic Net, owner of the well-known K-Way brand, against Giorgio Armani due to the latter's marketing of products bearing the famous K-Way colored stripes. 

Basic Net is the owner of a registered Community colour trademark reproducing the famous coloured stripe that characterises Basic Net clothing.
In its decision, the Turin Court preliminarily agreed with the arguments put forward by the General Court of the European Union (GC) regarding the application for registration of the Community figurative trademark with stripes. In that case, the GC upheld the rejection of the application for registration of the sign due to lack of distinctiveness. However, the GC found that the sign had acquired distinctive character through use (so-called "secondary meaning") in four EU Member States, including Italy. 

The Turin Court therefore concluded that the famous K-Way colored stripes constitute "a valid de facto trademark, with its own distinctive capacity even when used in combination with the KWAY trademark".

The Italian Court then ruled that the products they distinguish are "at least very similar (in the sense that they belong to the same line of sports/casual clothing) and sold at entirely comparable prices." This results in a likelihood of confusion between the plaintiff's Basic Net trademark and the colored band appearing on the Armani garment. The likelihood of confusion, according to the Court, arises from the use of the colored band, its overall visual impact, and its positioning on the sides of the zippers, as well as from the fact that both products bearing the stripe in question are sold in the same stores and that their prices are virtually identical. These circumstances "could in fact concretely lead consumers to believe that co-branding activities are underway between the two companies, which in reality do not exist." Finally, the Court of Turin excluded the application of the so-called imperative of availability opposed by the defendant. In fact, this principle "although it operates in the sense that the use (in this case) of stripes on clothing cannot be prevented - it does not cover and does not allow abuse by third parties, who, therefore, must still differentiate themselves through distinguishing additions or other arbitrary variations, sufficient to eliminate the risk of confusion".

In this case, however, the additions made by Armani (i.e., the famous stylized eagles and the "AJ ARMANI JEANS" trademark) are not considered sufficient to differentiate the product. Indeed, according to the Court, the affixing of a well-known trademark to a product does not preclude the infringement of another's figurative trademark; otherwise, "the paradoxical consequence would be to allow the owners of the former to freely appropriate the latter, with the sole precaution of using it in association with their own distinctive sign, which is well-established on the market and highly distinctive and recognizable." For all of the above, the Court concluded by declaring that the conduct carried out by Giorgio Armani S.p.A. "constitutes an act of infringement pursuant to Articles 20, paragraph 1, letter b) of the Italian Code of Criminal Procedure and 9 of the Italian Trademark Code, as well as an act of unfair competition resulting in confusion." It therefore issued an injunction against the defendant company prohibiting it from importing, exporting, selling, marketing, and advertising products in Class 25 (particularly jackets) bearing the trademark in question or another trademark containing the sign in question that extends to the territory of the European Union, and an order for the destruction of the counterfeit products in Italy.