Benetton's marks COLOR-fast against infringement action

In Dama SpA v Gruppo Benetton SpA (Case 7488/04, April 20 2004), the Italian Supreme Court has ruled that the COLORS series of trademarks of well-known clothes manufacturer and retailer Gruppo Benetton SpA do not infringe Dama SpA's rights in earlier marks.

Dama is a manufacturer of woollen garments. It filed an action with the Civil Court of Milan seeking a declaration that Benetton's COLORS marks, which are registered for, among other things, woollen casual wear, were null and void, and in any event infringing. Dama claimed rights in prior trademarks that also contain the word 'colors'.

The court upheld Dama's claims. It ruled that even though Dama's marks were to be considered weak, they were entitled to protection against the subsequent registration and use of marks containing the word 'colors'. Benetton appealed.

The Court of Appeals reversed. It declared that when a trademark consists of several elements that, considered individually, are generic and descriptive (as the court found to be true of Dama's marks), the mark is eligible for protection only if and to the extent that the combination of these elements is creative and distinctive, giving the mark as a whole sufficient distinctive character and originality. In such cases, however, the mark is protected only with regard to subsequent trademarks that reproduce almost exactly the original combination of non-distinctive and non-original elements. The court found that Benetton's marks did not reproduce the combination of Dama's marks.

Dama challenged the decision before the Supreme Court, arguing that the Court of Appeals had failed to consider that the term 'colors' (i) could be protected per se, even if its generic nature made it a weak sign, and (ii) should have been treated as the core of Dama's marks. Therefore, the subsequent registration and use by Benetton of the word 'colors', even as part of marks consisting of other elements, should have been regarded as an infringement.

The Supreme Court upheld the Court of Appeals' decision. It based its ruling on the distinction between complex and combination marks. A complex mark is one consisting of several elements, each having distinctive character, but where one element only (the core of the mark) conveys distinctiveness to the mark as a whole. Conversely, elements of a combination mark are not individually endowed with distinctiveness: it is their original combination that gives distinctive character to the mark.

The court held that, while reproduction of the core of a complex mark amounts to infringement and can give raise to invalidation of the subsequent trademark, combination marks are infringed only when the various elements of which they consist are reproduced in a confusingly similar combination. The court found that (i) Dama's marks are combination marks, and (ii) Benetton's marks do not reproduce the combination of words of Dama's marks in a confusingly similar manner.

Accordingly, the court ruled that Benetton's marks were valid and not infringing.

Francesca Rolla, Lovells, Milan