The specialized section on corporate matters of the Court of Appeal of Milan recently decided on a controversy between two well-known fashion companies, Diesel and Calvin Klein, having as object the “stripe” tag.
Background
The company Diesel has been manufacturing and marketing casual clothing items, including blue jeans, for years. Such products are characterized by the presence of a tag, called “stripe”, placed on the fifth anterolateral pocket of the trousers, which is formed by a small stripe of rectangular fabric (usually not in denim, but in a lighter fabric and color, with longer upper and lower sides compared to the height). The tag, placed halfway through the visible part of the fifth pocket, is extended throughout the length of the same transversally with respect to the upper edge.
Diesel “stripe” tag
Since Diesel had been using the stripe continually for decades, that is from the early 1980’s, it considered it an identifying element of the fashion company itself. For this reason, it filed two Italian trademark applications in 2018 which obtained registration the following year.
In the meantime, in 2017 Diesel became aware that Calvin Klein was using a tag constituted by a stripe of fabric similar in shape and placement to its stripe (even if not placed obliquely with respect to the pocket) and therefore decided to sue it for counterfeiting and unfair competition.
Calvin Klein, on its part, asked for the invalidity of the trademark for lack of distinctive character.
Judgement of first instance of the Court of Milan
With judgement no. 8845/2020 the specialized section on corporate matters of the Court of Milan established that, on one side, the trademarks of Diesel were valid and protectable (for having distinctive character) and on the other, it rejected the requests for counterfeiting and unfair competition brought by the plaintiff. Therefore, Diesel appealed against such decision, as did Calvin Klein, which reiterated the request of invalidity of the Diesel signs.
Decision of the Court of Appeal of Milan
The Court of Appeal, with ruling no. 1999 of June 16th 2023, substantially confirmed what already decided by the first instance judge. Nevertheless, it decided to preliminarily examine the issue of the cross-appeal brought by Calvin Klein, as the possible invalidity of the signs had to be considered a prodromic issue with respect to the exam of the questions brought by Diesel.
Calvin Klein, on this issue, stated that the trademarks of Diesel were lacking of distinctive character (and therefore void) and had to be considered simply as a mere ornamental element. Moreover, it declared that its own tag differed from Diesel’s one because placed in horizontal position (and not oblique) with respect to the pocket.
Nevertheless, the Court of Appeal agreed on what was established by the Court of Milan, considering valid and protectable both the de-facto signs and those registered by Diesel and stated that the trademark “stripe” has distinctive character, due to the particular placement of the fabric on the anterolateral pocket and the diagonality of such element, completely unusual in the field and therefore able of creating a connection to the manufacturing company Diesel.
Once confirmed the validity and protectability of the “stripe” trademarks of Diesel, the Court lingered on the questions raised during the appeal by Diesel, confirming, even in this case, what already decided by the Court in first instance, and rejecting therefore the accusation of counterfeiting and unfair competition.
In general terms, in fact, the confusion between the two trademarks must be evaluated taking into consideration the perception of the average consumer, reasonably careful and prudent. Calvin Klein’s tag does not reproduce the oblique distinctive element nor other features of the Diesel stripe. Moreover, the stripe of Calvin Klein is always paired with the relating verbal trademark “Calvin Klein”, contributing thus to reduce the risk of confusion.
Lastly, the Court pointed out the items at issue are sold in dedicated stores or in well delimited and marked areas of department stores and always in the presence of sale staff, making it almost impossible for the consumer to confuse a brand with the other. Moreover, the fact that they are high level clothing items, to which a consumer usually pays more attention compared to the attention paid to the purchase of lower-level genres, contributes to confirm the lack of counterfeiting and unfair competition.
Tania Giampieri