Written by: Natalia Kokesova

A recent decision of the Italian Supreme Court has overruled precedent which made it a hurdle for the British luxury fashion house, Burberry – and many others – to have its figurative mark recognized and protected as a trademark.

Burberry had filed a trademark infringement case against certain Chinese entities selling clothing with a print resembling the iconic Burberry check – a Scottish tartan pattern with a beige base, accentuated by black, red, and white stripes[1]. The pattern was famously incorporated on its trench coats since 1920, but now also found in garments, footwear, fragrances, handbags, and small leather goods, among many other items commercialized by the brand.

The first instance court held that according to art. 474 of the Italian Criminal Code there was no trademark infringement, since the brand name “Burberry” was not incorporated in the allegedly infringing items, and thus the consumer would not consider Burberry to be the source of the goods[2]. In other words, there would be no confusion as to the origin of the goods and hence no infringement.

On appeal, Burberry argued that the 100-year-old pattern alone serves as an indicator of source. Hence, the reproduction of the pattern by the defendants – even without the brand name “Burberry” – was likely to make consumers believe that the British luxury fashion house was the source of the products. The court agreed with such an argument: the unauthorized reproduction of the check alone could be considered as trademark infringement. However, the court considered that the pattern belongs to a broader category of “famous Scottish tartans”[3], and this in turn meant that such pattern was incapable of indicating a single source (i.e. it fails to achieve the basic function of a trademark: indicating its commercial origin).

The Supreme Court approached the matter differently this past October, 2020. It sided with the Court of Appeal´s finding that there was no need for the brand name “Burberry” and the check pattern to be attached for trademark infringement to take place. However, the court went further to note that trademark infringement occurs even in cases of partial reproduction of the trademark where there is likelihood of confusion[4]. This was held to be especially the case where the trademark has an established worldwide reputation, such as the present one.[5] Hence, the court not only overturned dangerous precedent, but also recognised that the Burberry check, probably its main figurative mark, enjoys market reputation and the necessary distinctiveness to be afforded with trademark protection.  

While this case relates to Italian criminal law, it is an important decision for global brands such as Burberry for the precedent it sets in relation to figurative marks. As it has been briefly explored before, international brands are composed of other (figurative) elements aside from the brands´ name and it is equally essential for such brands to obtain protection for such elements which are part of their signature image[6]. However, obtaining protection for such figurative elements may be burdensome for the need to prove a key element: distinctiveness, the test for such requirement being, does the public perceive the sign to be a mark of a particular undertaking? If a mark is perceived to be a sign of a particular undertaking, then it serves as an indicator of commercial origin, and hence fulfils the basic function of a trademark; if a mark does not serve as an indicator of origin, then simply, there is no trademark and no trademark protection available for such element.

Therefore, this judgement affords well-deserved protection to a century-old element within the Burberry brand which serves as an indicator of commercial origin in many items commercialized by the fashion house ranging from clothing to homeware.