THE TURIN COURT ON THE PROTECTION OF K-WAY COLORED BANDS.
The Court of Turin recently ruled in the case brought by Basic Net, owner of the well-known K-Way brand, against Giorgio Armani over the latter’s sale of products bearing K-Way’s distinctive colored stripes.
Basic Net is the owner of a registered Community trademark in color that reproduces the famous colored stripe that characterizes Basic Net’s clothing.
In its decision, the Court of Turin first endorsed the arguments put forward by the General Court of the European Union (“GC”) regarding the application for registration of the striped Community figurative trademark. In that case, the EUG had upheld the rejection of the application to register the mark on the grounds of lack of distinctiveness. However, the EUG had found that the mark had acquired distinctiveness through use (so-called “secondary meaning”) in four European Union member states, including Italy.
The Court of Turin therefore concluded that K-Way’s famous colored stripes constitute “a valid de facto trademark, possessing independent distinctiveness even when used in combination with the KWAY trademark.”
The Italian Court further ruled that the products bearing these marks are “at the very least very similar (in the sense that they belong to the same line of sports/casual clothing) and sold at entirely comparable prices.” This gives rise to a likelihood of confusion between the plaintiff’s Basic Net trademark and the colored stripe appearing on the Armani garment. According to the Court, the likelihood of confusion stems from the use of the colored stripe, the overall visual impact it creates, and its placement on either side of the zippers, as well as 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 “may in fact lead the consumer to believe that co-branding operations are underway between the two companies, when in fact they do not exist.” Finally, the Court of Turin ruled out the application of the so-called “imperative of availability” invoked by the defendant. In fact, this principle “while it operates in the sense that the use of stripes on clothing cannot be prevented—does not cover or permit abuses by third parties, who, therefore, must always differentiate themselves through distinguishing additions or other arbitrary variations sufficient to eliminate the risk of confusion.”
In the present case, however, the additions made by Armani (namely, the famous stylized eagles and the “AJ ARMANI JEANS” trademark) are not considered sufficient to distinguish the product. In fact, according to the Court, the affixing of a well-known trademark on the product does not preclude infringement of another party’s figurative trademark; if this were not the case, “it would lead to the paradoxical consequence of allowing the owners of the former to freely appropriate the latter, simply by using it in association with their own distinctive sign, which is well-established in the market and highly distinctive and recognizable.” For all the above reasons, the Court concluded by declaring that the conduct engaged in by Giorgio Armani S.p.A. “constitutes an act of infringement pursuant to Articles 20(1)(b) of the Italian Industrial Property Code and 9 of the EU Trade Mark Regulation, as well as an act of unfair competition causing confusion.” It therefore issued an injunction against the defendant company prohibiting the importation, exportation, sale, marketing, and advertising of products in Class 25 (specifically jackets) bearing the trademark at issue or any other trademark containing the sign in question, effective throughout the European Union, and an order for the destruction in Italy of the counterfeit products.