With the judgement No. 3803, rendered on February 25, 2015, the Italian Supreme Court of Cassation issued a new ruling regarding the conditions for the protection of a colour trademark.

In the present case, the company DOW Italy S.r.l. (“DOW”) - a company operating in the chemical industry - was the owner of a trade mark claiming the colour "pure blue", with reference to the key-parameter “Pantone 290U”, and used over 20 years to distinguish its products and services on the market.

The DOW has accordingly sued the company AB Isolanti, operating in the same sector, for the assessment of the acts of infringement of its trademark and unfair competition, as a result of the realization and marketing by AB of an insulating panel of blue colour the same as that of the plaintiff’s trademark. The claim of DOW was rejected both in first and second instance, on the assumption that the enforced trademark was to be qualified as weak trade mark and "void of particular virtues of originality” and that, therefore, a partial diversity in colour gradient was sufficient to deny its slavish imitation and counterfeiting.

Following the action brought by DOW, the Supreme Court upheld the ruling of the Territorial Court of Brescia.

First, the Court reiterated the principle that the acquisition of distinctiveness of a mark for prolonged use should be considered an exceptional case to be verified case by case; moreover, this distinctiveness can only be achieved through a suitably qualified use of the sign, or by a sufficiently prolonged and consistent use of the same in a significant time period.

In the present case, the qualified use had been excluded by the first instance courts, precisely on the basis of the facts examined in the previous two sets of proceedings; in fact, the owner of the mark appeared to have made use, in their commercial and promotional communications, of various shades of blue and not always corresponding to the registration.

The Supreme Court has therefore concluded that:

  1. the ratio decidendi of the Territorial Court was not to exclude in principle that the colour blue could not rise to colour mark; but, instead, that
  2. in the case in exam “that particular shade individualizing the blue colour of the panels did not emerge, such as to sustain the thesis of the strengthening the trademark through protracted use”; and therefore
  3. the mark of DOW was “void of particular virtues of originality and conceptual elaboration” and therefore it must necessarily be considered weak, being sufficient even a slight modification (for example at the level of shades and tones concretely used) or addition (for example by use in combination with other elements such as writings, holes, etc.) to exclude confusion also in comparison to similar products.