by Laura Spagnoli and Elena Martini

With an order issued on 26 February 2019, in the proceeding with docket number 16185/2018, the Court of Bari ruled on the infringement of the well-known Supreme trademark by the Supreme Gold trademark.

By granting the action brought by the company Chapter 4 Corp. D.B.A. Supreme, owner of the first trademark, the Court confirmed the precautionary measures previously issued ex parte, with which it had authorised the urgent seizure of the products placed on the market bearing the Supreme Gold trademark and the related advertising material; enjoined the use and the advertising of any sign likely to be confused with the Supreme trademark; and ordered the withdrawal from the market of the same products and the related advertising material.

In the decision here discussed, the Judge firstly assessed whether the Supreme trademark met the requirements of novelty and distinctiveness pursuant to the Italian IP Code. In particular, with reference to novelty, the existence of similar earlier brands containing the word “supreme” did not prevent recognition of this legal requirement, since the absence of any similarity in the activity carried out by the owners of the signs and in the market to which the products belong would exclude any risk of confusion for consumers. As for the distinctiveness requirement, on the other hand, the Judge found that the trademark is strong: in fact, the sign does not consist of generic or merely descriptive names of the products for which it is used, nor does it have an immediate connection with them since the meaning of the word “supreme” has no correlation with the streetwear style of the marketed clothing. Moreover, the trademark at issue consists not only of the word “supreme” but also of its graphic elements: the colour, the proportions and the font used, as well as the red rectangle that frames it.

The Court of Bari therefore recalled that the protection granted by art. 20 CPI (b), can be invoked when, due to the identity/similarity between the trademarks and the identity/similarity between the marketed products, a likelihood of confusion or association occurs such as to mislead potential buyers on the market. In this case, the Judge noted that the Supreme Gold trademark faithfully reproduced the characters and colours of the Supreme trademark and, like the latter, was used for clothing products that shared the typical streetwear style of the Supreme products. Therefore, the existence of the similarity requirement between the signs and the products, required by the law, was proven.

On this basis, the Judge ascertained the infringement of the Supreme trademark and the unfair competition committed by the defendant pursuant to article 2598 no. 1) and no. 3 of the Civil Code, as the Supreme Gold sign was likely to create confusion with the trademark legitimately used by Chapter 4 and the defendant’s conduct was non-compliant with the principles of professional fairness and able to damage the same company. The ex parte measures were therefore fully upheld: the Court enjoined the use and advertising (also online) of the Supreme Gold trademark and of any other confusing sign containing the word “supreme”, setting a penalty for any further infringement; ordered the withdrawal from the market of the products bearing these trademarks and the related advertising material; authorised the seizure of the same; and finally ordered the publication of the entire decision (instead of the sole ruling, as usually happens) in the La Repubblica and La Gazzetta del Mezzogiorno newspapers, ordering the defendants to pay the litigation costs.