The Audemars Piguet Royal Oak watch is not a three-dimensional logo.

The Court of Milan recently ruled on the protectability of the design of the famous “Royal Oak” watch, created in 1972 by the Swiss company Audemars Piguet and initially protected as a three-dimensional trademark.

Audemars Piguet had registered the shape of its bezel as an international figurative trademark and alleged trademark infringement and unfair competition through slavish imitation by the watches marketed by the Milan-based startup D One s.r.l.

Initially, the court issued an ex parte order prohibiting future sales; however, after D One appeared in court and presented its defense, the presiding judge reversed his initial decision and dismissed Audemars Piguet’s appeal on the grounds that “there are numerous grounds for doubt regarding the validity of the trademark in question,” as evidenced by the fact that its registration as a Community trademark was denied by the competent office (OHIM).

In particular, according to the Court, the trademark appears to lack distinctiveness, that is, the ability to “distinguish the goods from those of another manufacturer and, therefore, to serve the function of identifying the commercial origin of the product”;

According to the Milan court, the three-dimensional distinctive sign does not appear to have acquired distinctive character through use (so-called “secondary meaning”), “since no consistent use of the sign has been documented.”

Finally, the registration of the shape in question as a trademark does not appear to be compatible with the provisions of Article 9 of the Italian Industrial Property Code, which states that “signs consisting exclusively … of a shape that gives substantial value to the product may not be registered as trademarks.”

 On the subject of unfair competition, the judge noted that, for the offense of unfair competition under Article 2598, paragraph 1, subparagraph 1 of the Civil Code to be established, the slavish imitation of another’s product must “involve characteristics that are entirely inessential to the function they are intended to perform,” namely those “arbitrary and capricious” characteristics that are “new compared to what is already known,” which confer originality on the product and possess distinctive capacity, such that the public is led to associate them with the company from which the product originates: only when it concerns these characteristics does slavish imitation involve “elements capable of causing confusion among the public” and thus constitute unfair competition through confusion.

In the present case, the judge did not find that such imitation existed, essentially stating—based on the findings regarding trademark infringement—that the imitated features were “structural to the product and not distinctive,” and in some cases “now accepted by the general public, having undergone a certain standardization,” and that in any event there were “significant differences” between the two products.