With the decision no. 5099 dated March 5, 2014, the Supreme Court, upholding the Milan Court of Appeal decision, denied that the word “Oro” (Italian for “gold”), as part of the compound trademark “Oro Saiwa”, is capable of being distinctive.
The proceeding between the two food companies started in 2002, when Saiwa s.p.a (hereafter, “Saiwa”) sued Barilla Alimentare s.p.a (hereafter, “Barilla”) before the Court of Milan claiming the nullity of the sign “Oro” as part of the compound trademark "Selezione Oro Barilla". Saiwa alleged that Barilla’s “Oro” trademark was anticipated by its prior trademarks "Oro Saiwa", "Pacco Oro Saiwa", "Pacco Oro", Italian trademark "Oro" and international trademark "Oro". Furthermore, Saiwa also requested to ascertain the infringement of its trademarks and the unfair competition by the defendant.
Barilla appeared in that proceeding requesting the dismissal of counterpart’s claims and requesting the judge to declare the nullity of trademarks “Oro” owned by SAIWA, as being devoid of distinctive character.
The Court of first instance upheld Barilla’s claim and declared the nullity of Saiwa’s trademarks “Oro” and “Pacco Oro”. According to the court’s ruling, such indications are customary in the current language of trade and are used to describe the positive features of a product. The Court of Appeal of Milan then upheld the first instance decision.
Saiwa appealed the second instance decision before the Supreme Court arguing that, regardless of its descriptive character, the sign “Oro”, as part of the compound trademark “ORO SAIWA”, had acquired “secondary meaning” since it has been used for a long and continuous period of time.
The Supreme Court dismissed Saiwa’s appeal. In particular, it argued that, while the compound trademark “Oro Saiwa” had acquired a certain reputation, the only original and distinctive element within said compound trademark is the sign “Saiwa”, while the word “Oro”, due to its descriptive character, has not acquired distinctive character.