Dolce & Gabbana and its perfume “K” beat Kappa over the use of the letter

Dolce & Gabbana and its perfume “K” beat Kappa over the use of the letter

The letter K is not a registered trade mark. The Court of Turin, regardin g the use of the letter, ruled with judgment 5027 of 6 December 2023 on the dispute between the companies Kappa Srl and Basic Italia (which belong to the sports and casual wear group BasicNet) and the fashion house Dolce & Gabbana.

The story dates back to 2020, when the companies of the Turin-based group, which also owns the K-way and Superga brands, sued Dolce&Gabbana, “guilty” of having launched the K-Dolce&Gabbana perfume, marketed by the Turin-based company Gst Profumi Spa.

Kappa and Basic Italia asked the Court of Turin to declare the use of the logo illegal on the grounds of counterfeiting and unfair competition and therefore to ban it, ordering the Milanese fashion house to pay compensation.

Dolce&Gabbana responded by pointing out that the logo was different in many respects from those used by the Piedmontese company.

Use of the letter: Court ruling

The Court ruled in favour of the group founded by Domenico Dolce and Stefano Gabbana and GST Profumi and declared invalid the word mark Kappa which has as its object the letter “K” (n. 302012902030637, registered on 30/01/1995, for class 25, and last renewed on 19/10/2022, with registration no. 362022000028934).

Stating that it is “devoid of the minimum degree of distinctiveness necessary for its validity, being incapable of creating a connection with the goods” of Kappa, and further excluding that this sign has acquired distinctive character through use, since it has not been demonstrated that Kappa has “used, in a stable and constant manner, the sign K, in order to penetrate the common knowledge of consumers as an indicator of the commercial origin of the products” of Kappa itself.

The Court also rejected all the infringement claims put forward by Kappa, finding “that the mark differs significantly from the (valid) marks owned by the applicants, taking into account the nature of the signs compared and the visual, phonetic and conceptual analysis.

It follows that, notwithstanding the identity of the goods (perfumery and clothing) and notwithstanding the applicants’ reputation/ renown containing the word “KAPPA” (recognised by the EUIPO Opposition Division in a decision of 5/05/2023) – it is unlikely that the relevant public (made up of end consumers, endowed with a degree of consumers with an average degree of attention and selectivity) is unlikely to make a mental connection between the conflicting signs, associating the goods marked by the sign with the applicants”, reads the judgment.

Kappa also approached Euipo to oppose the registration of the K-Dolce&Gabbana trade mark, but Euipo rejected the opposition on 5 May 2023. Kappa appealed the decision before the Board of Appeal of EUIPO.

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