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The letter K is not a registered trademark. The Court of Turin ruled with sentence 5027 of 6 December 2023 on the dispute that had seen the companies Kappa Srl and Basic Italia (which belong to the BasicNet sports and casualwear group) and the Dolce & Gabbana fashion house clash.
The story dates back to 2020 when the companies of the Turin group which also owns the K-way and Superga brands, brought a lawsuit against Dolce&Gabbana, “guilty” of having launched the K-Dolce&Gabbana perfume, marketed by the Turin company Gst Profumi Spa .
Kappa and Basic Italia, assisted by the lawyers Sindico and Spina, asked the Court of Turin to have the use of the logo declared illegal for counterfeiting and unfair competition and, therefore, to ban it, condemning the Milanese fashion house to pay damages. The Dolce&Gabbana maison, assisted by the Spheriens studio, had countered by pointing out that the logo was different in numerous respects compared to those used by the Piedmontese company.
The Court ruled in favor of the group founded by Domenico Dolce and Stefano Gabbana and of GST Profumi and declared the nullity of the Kappa word mark having as its object the letter “K” (n. 302012902030637, registered on 01/30/ 1995, for class 25, and lastly renewed on 10/19/2022, with registration no. 362022000028934), noting that it is «devoid of that minimum of distinctive capacity necessary for its validity, not being in capable of creating a connection with the products” of Kappa, and also excluding that this sign has acquired distinctiveness thanks to use, since it has not been proven that Kappa has “used, in a stable and constant manner, the sign K, in order to penetrate in the common knowledge of consumers as an indicator of the commercial origin of the products” of Kappa itself.
The Court also rejected all infringement claims proposed by Kappa, deeming «that the trademark differs significantly from the (valid) trademarks owned by the plaintiffs, taking into account the nature of the signs being compared and the visual, phonetic and conceptual analysis. It follows that – despite the identity of the products
(perfumery and clothing) and despite the renown/notoriety of the plaintiff brands
containing the word “KAPPA” (recognized by the EUIPO Opposition Division in
decision of 5/05/2023) – it is unlikely that the relevant public (consisting of
final consumers, equipped with a medium degree of attention and selectivity) makes a mental connection between the conflicting signs, associating the products marked by the sign with the plaintiff companies”, reads the sentence.