In its decision of June 10th 2026, the Milan Court addressed the issues of trademark infringement and the validity of a number of trademarks owned by Paglieri S.p.A. In particular, the Court examined the word trademark “Felce Azzurra”, two figurative trademarks (the first consisting of the words “Felce Azzurra” together with the image of a fern leaf, and the second consisting of the word “Paglieri” followed by the number “1876”), as well as the colour trademark corresponding to the iconic Pantone 2381C, which has long characterised the distinctive ribbed packaging used by the claimant for its personal care and household products. The validity and reputation of the trademarks With regard to the validity of the “Felce Azzurra” trademarks, the Court dismissed the defendant’s objections that the trademarks were deceptive and descriptive because they combined a botanical element (“fern”) with a colour adjective (“blue”). According to the Court, this combination would not lead the average consumer to believe that the products actually contain fern extracts; rather, it evokes an imaginative image. This aspect of the decision is particularly noteworthy, as it is firmly grounded in the perspective of the average consumer. A blue fern – even if such a plant may exist in nature – constitutes an unusual and atypical representation, which consumers are more likely to perceive as a creative concept than as a description of the product’s characteristics. On this basis, the Court excluded both the deceptive and descriptive nature of the trademarks at issue. Equally significant is the Court’s recognition of the reputation enjoyed by the “Felce Azzurra” trademarks. In reaching this conclusion, the Court placed considerable weight on the long-standing market presence of the products bearing the trademarks, the extensive advertising campaigns conducted since the 1950s, the recognition of the marks as part of Italy’s register of historic trademarks of national interest and the widespread commercial success of the products. According to the Court, this finding plays a decisive role in assessing infringement because, as established by the case law of the Court of Justice of the European Union, where a reputed trademark is involved it is not necessary to prove the existence of a genuine likelihood of confusion. It is sufficient that the relevant public establishes a link between the contested sign and the earlier trademark. The trademark infringement Against this background, the Court held that the defendant’s sign “FELCE 1876”, accompanied by the image of a blue fern leaf, infringed the claimant’s trademarks. The assessment took into account the overall combination of elements appearing on the defendant’s packaging, namely the word “FELCE”, the number “1876”, and the graphic representation of a blue fern leaf. Although differences existed in the graphic design, the arrangement of the various elements, and the presence of the brand “Coccolatevi”, the Court found that these differences were insufficient to neutralize the overall impression of association created by the sign. Of particular interest is the Court’s reliance on the technique of “repeated recall” of distinctive elements drawn from different trademarks belonging to the same undertaking. According to the decision, the simultaneous reference to several distinctive signs strengthens the mental association in the mind of the consumer who receives multiple visual cues referring to a portfolio of trademarks with which they are already familiar. The color trademark Finally, the Court addressed the validity of the Pantone 2381C color trademark registered by the claimant. In the present case, the Court acknowledged that, although shades of blue are commonly used in the household and personal care sector, the specific Pantone 2381C shade possesses sufficiently distinctive character and, above all, has been used consistently for decades as a defining element of the visual identity of “Felce Azzurra” products. The evidence of long-standing use and consumer perception proved decisive. This was further supported by market research showing that more than 80% of consumers associate that specific shade of blue with the claimant’s trademark. From this perspective, the color ceases to be merely a decorative feature of the packaging and instead functions as a genuine indicator of commercial origin. Concluding remarks This decision is particularly noteworthy because it addresses several fundamental aspects of trademark law – from validity and reputation to the protection of color as an indicator of commercial origin – while offering a nuanced analysis of product visual identity. Although the Court did not expressly refer to the phenomenon of look-alike, its reasoning effectively engages with one of its most significant manifestations: the coordinated use of graphic, chromatic and verbal elements which, even in the absence of a slavish imitation, may lead consumers to establish an undue association with an earlier trademark.
2026 - Morri Rossetti
