Co-published editorial

Bugnion SpA Keeping with tradition

Non-traditional marks are afforded protection in Italy, but there are challenges to registration

Trademarks traditionally consist of • It must fulfil the essential function by a 2012 ruling of the Court of Venice, which distinctive signs such as words, images or of distinguishing and connecting held that “the which relates on the symbols. However, a trademark can fulfil its products or services to a particular form of a product is invalid if it does not fulfil distinguishing function through alternative commercial source. the function of identifying the commercial elements, such as sounds, colours, scents, source of the product itself…being irrelevant... positioning, motion, touch or taste. These requirements significantly that the shape of the product has been This article briefly analyses the primary hinder the registration of non-traditional accredited to the consumers due of the critical issues faced by each type of non- . These difficulties are advertising investments made” (February 15 traditional trademark in terms of Italian heightened in particular for sound marks 2012, 1297/12). case and doctrine. It goes on to focus on and scent marks. colour marks in light of recent judgments The main problems lie in the objective Sound marks handed down by the Italian courts. graphical representation of trademarks, As per sounds which can be reproduced In terms of non-traditional trademarks, which must be intelligible and accessible to on a stave, the Court of Naples has stated the contribution made by Italian case law has the target consumers. that a musical jingle that is used for tended to be less significant than that played advertising purposes may be considered by the European Court of Justice (ECJ), to Shape marks as a sound mark (Case 3753/2006, March which the Italian courts usually defer. A shape mark constitutes the actual shape 16 2006). However, Italian case law on the of a product that is sufficiently distinctive matter is scarce. Legal framework or unusual to function as a trademark. Pursuant to Article 7 of the Intellectual A particular shape can give a product a Scent marks Property Code, and in line with Article 4 of unique appearance. Scents are the most controversial type of the EU Community Trademark Regulation However, Article 9 of the Industrial non-traditional mark, due to the difficulty (207/2009), the Italian legislature has Property Code states that “signs consisting in representing them graphically. Although clarified that the following can be registered exclusively of the shape which results no cases involving scent marks have come as a trademark: “all the signs which may be from the nature itself of the product, or before the Italian courts to date, the courts represented graphically, particularly words, consisting of the shape of the product would have to apply the strict ECJ case law including personal names, designs, letters, which is necessary to obtain a technical in this regard. numerals, the sounds, the shape of the result or of the shape which gives product or packaging of it, combinations substantial value to the product may not be Colour marks or shades of colours, provided they are registered as trademarks”. Registering colour marks with the Italian capable of distinguishing the goods or For three-dimensional trademarks, and Trademark Office does not seem services of one undertaking from those of meeting the requirements set forth by this to be particularly difficult. Nevertheless, other undertakings”. This list is by no means article is extremely difficult and registration the primary critical issue relates to the exhaustive, but serves as a mere example. is granted in only a few cases. On March 3 registration of single colours, as opposed to In any case, from the wording of the 2008 the Court of Turin ruled on a shape colour combinations. above article (which establishes the general mark application, holding that the shape While no doubts have ever arisen principles that apply to any type of mark, be it of a smart car could be validly registered about the possibility of registering colour conventional or non-traditional), it is clear that as a Community trademark because this combinations, case law suggests that courts in order to be registered in Italy, a trademark shape was not a requirement of the intrinsic are reluctant to grant trademark protection must comply with three basic requirements: nature of the product, was not needed to to single colours. For example, in a Court • It must be a sign of “business achieve a technical result and did not give of Milan case, it was argued that primary communication”; substantial value to the product. colours such as blue and red cannot be • It must be capable of being represented However, the difficulty in registering registered as a trademark (June 7 2007). graphically; and shape marks seems to have been confirmed For a long time, it was thought that

96 World Trademark Review December/January 2014 www.WorldTrademarkReview.com Country Correspondent: Italy

single colours could not be registered lacked distinctiveness, as these colours are as trademarks because they lacked commonly used in the leather industry. distinctiveness and could not indicate the In its reasoning, the Supreme Court trade origin of a product. referred to the principle set out in Libertel, Moreover, the registration of colours which aimed to prevent undue restriction as trademarks was considered contrary to of the availability of colours for other the public interest, which aims to protect business entities operating in the same the free disposal of colours. In view of their sector. However, the issue of the possible limited number, granting registrations for acquisition of distinctive character through single colours would lead to monopolies. use of such colour marks was not dealt with Consequently, for many years, unfair in this case. competition law was largely invoked in In Guccio Gucci SpA v Guess Inc order to protect unique colours. (6095/2013, January 10 2013, published on However, this approach began to May 2 2013), the Court of Milan held that a be challenged in legal literature in Gucci trademark consisting of coloured stripes the 1990s. It was argued that lack of (green-red-green) was validly registered, distinctiveness could not be regarded Simone Verducci-Galletti despite the absence of Pantone numbers. as an objective characteristic of colour Associate The court ruled that the trademark used as a trademark, but rather that such [email protected] as held “may be assigned undoubted lack of distinctive character should be distinctive strength and it is considered assessed on a case-by-case basis, including Simone Verducci-Galletti is a registered suitable to accurately identify the origin of assessment of secondary meaning Italian and Community trademark and the products”. However, it confirmed that acquired by the colour. design attorney. He graduated in law from if the trademark at issue had been a single This impasse was resolved by the the University of Perugia and specialised colour, the relevant application would have ECJ’s well-known Libertel judgment (May in EU law and economics. Before joining required a Pantone number. 6 2003), in which the ECJ ruled that it Bugnion’s Milan office in 2004, Mr Therefore, Pantone numbers are not is possible to register single colours as Verducci-Galletti worked as a consultant required when the colour combination is trademarks, provided that the colour itself with IP firms in Rome and Alicante such as to give the sign sufficient distinctive is defined in a sufficiently clear manner (Spain). His areas of practice cover strength. This condition was deemed to (eg, identified by an internationally trademarks, designs, and have been fulfilled by Gucci’s green-red- recognised identification code, such as a related legal issues. green stripe mark. The court stated that Pantone number). “the alternation of colours is such as to The (few) judgments of the Italian indicate that the mark is described with the courts in relation to colour marks required accuracy and can be identified in have mainly invalidated colour mark an objective manner”. registrations due to regular and recurrent Moreover, in the same decision, the use of the colours in certain business court ruled that the use of brown-red-brown sectors, thus rendering them incapable stripes by Guess for shoes did not constitute of distinguishing the activities of one infringement of Gucci’s above-mentioned enterprise from those of competitors (App green-red-green trademark. The court held Milan, May 7 2002, GADI, 2002, 857). that “it is certainly not protectable the Similarly, if a colour used as a simple idea of using in clothing accessories trademark is natural to the product for a tape characterised by the alternation of which it is used, it does not have distinctive colours”, and that “in the fashion industry, character and therefore cannot be validly inserted strips in various ways are registered (eg, it has been argued that widespread, especially in the accessories “the use of silver and aluminium in bearing the alternation of colours”. WTR food packaging is also generalised to the technical requirements and functional and Donatella Prandin cannot be protected by a trade mark” (Court Partner of Milan, November 15 1994)). [email protected] Moreover, the Court of Cassation (Italy’s Supreme Court) has specified that only Donatella Prandin is a partner of Bugnion those colours with particular or unusual SpA and is the foreign department manager. chromatic tonality can be registered as She graduated in law from the University of trademarks. In the case at hand (7254/2008), Milan and joined the firm in 1991. She is a the Supreme Court, upholding a Milan registered Italian trademark attorney and a Court of Appeal decision, ruled that several Community trademark and design attorney. trademarks owned by Louis Vuitton in Ms Prandin has extensive IP experience. Her relation to leather goods, which consisted practice covers trademark, , design of the colours black, brown, beige, green, and domain name issues. red and blue, were invalid because they www.WorldTrademarkReview.com December/January 2014 World Trademark Review 97