By Elena Varese e Lara Mastrangelo
The Milan Fashion Week has just started and from today we are glad to host for the second time some highlights on the major fashion law trends of this season.
“A rose by any other name would smell as sweet” used to claim Juliet in the famous Shakespeare’s play, but would a Louis Vuitton bag without its legendary monogram – or with a slightly different one – be as fashionable? To be honest, the tragic end of Shakespeare’s story might suggest that names – like it or not – have a significant value. This is even more than true when we look at the fashion industry.
In fact, some maisons have actually built their empire on motifs made by combining the initials of the founder’s name or, more generally, alphabetic letters. As a result, such monograms ended up becoming extremely iconic and the fortune of such maisons is still grounded in large part on them.
In other words, what would Louis Vuitton be without the interlocking L and V with floral pattern inspired to Japanese symbols, designed by Louis Vuitton’s son, Georges, in 1896? Georges designed Damier (1888) and, some years later, the Monogram in its final version (1896) . He wanted to brand his nascent box and luggage business and distinguish it from the – already existing – copycats’ products. Since then, the Monogram has always been used and reinvented by any creative director working for the maison. The same is true for Gucci, whose inverted double G were designed in 1993 by Guccio Gucci’s son, as well as for Fendi, whose monogram was designed by none other than Karl Lagerfeld, that penned the iconic Double F “in three seconds”, as he recalls in Loic Prigent’s 2013 ‘Karl Lagerfeld Sketches His Life’ documentary.
Although the huge commercial value of monograms in the fashion industry is not questioned, one cannot deny that monograms are still made of letters of the alphabet. Sometimes combined and graphically elaborated in a way which makes them extremely different from the conventional version used in language, but sometimes not.
In this regard, the new sans-serification trend followed by many fashion companies, that is, the restyling of the brand towards simplification and minimization of its visual impact, makes monogram letters even closer to common use. Hence, a question may arise: can monograms be registered as trademarks? If the answer is generally yes, the topic is much more complicated.
First of all, it should be remembered that prior to 1992 Italian courts used to claim clearly that the letters of the alphabet considered in themselves could not be the subject of a valid trademark, unless they were enriched by particular graphic characteristics, suitable for attributing distinctiveness to the sign. This conception was grounded on the idea to keep free the use of these signs, both because of their primary function as language tools and, in any case, because of their scarce number.
Following the enactment of Legislative Decree no. 480 of 1992 (in implementation of Directive 89/104/EEC), the possibility of registering the letters of the alphabet as a trademark was introduced into the Italian legal system (Article 16 of the Trademark Law, then transposed into Article 7 of the Italian IP Code). Despite this result, part of the scholars continue to doubt their validity as trademarks, at least in the absence of a sufficient graphic elaboration.
Italian courts, even when recognizing the validity as trademarks, have a careful approach. Some courts still argue that trademarks consisting of letters are in any case “weak” and, as such, protected only within the limits of their graphic characterization, so that even slight changes or additions are sufficient to exclude infringement. More recently, however, and precisely after a decision of the Court of Justice of the European Union stating that alphabetic letter can be registered as trademarks as long as distinctive (C-265/09), even Italian courts seem to grant a broader protection, founding that the validity of a mark consisting of a letter of the alphabet must be entirely grounded on the distinctiveness test, no matter if the letter has a particular graphic (see, among others, Court of Naples, 16 March 2012 in Giur. Ann. Dir. Ind., 13, 396).
Moreover, in a decision concerning the “omega” letter used by the maison Ferragamo as the shape of the closing ring of a bag, the Supreme Court clearly ruled that “the letters of the alphabet, in fact, even though they constitute, in themselves, signs normally intended … for a communicative function as language tools, can be used (regardless of any graphic characterization that has been given them) as identification signs of products or activities, i.e. for a purpose which is not their common one, and that precisely for this reason they can gain distinctiveness”. However, the case at issue here is very specific, as the omega belongs to the Greek alphabet, and is therefore less likely to be used in Italy as a common letter (see Court of Cass., 16 March-25 June 2007, n. 14684, in Guida dir., 2007, n. 30, 25 and in Foro it., 2008, I, 177).
Even if courts are starting to recognize more protection to letters and, thus, they will be more likely to protect monograms, from a broader perspective a paradox seems to rise: certain monograms which are in practice extremely recognizable (no one would doubt that the interlocking L and V refers to Louis Vuitton brand), even if registered, are not easily protected as strong trademarks.
In fact, also major players with very distinctive monograms have struggled to protect their marks before Court. In the Gucci/Guess case, for instance, the Court of Appeal of Milan confirmed the ruling of first instance, stating that the trademark covering two of the Gucci’s monograms “letter G with dots” and “the letter G with dots serially repeated” were devoid of any distinctive character “on the ground that letters of the alphabet would be commonly used in the fashion field and the public would only recognise the ‘two interlocking Gs’ – rather than the single letter G in combination with dots – as coming from Gucci” (see Court of Appeal of Milan, 10 July 2014, available on Darts IP).
In order to enhance the distinctive character of the monogram, particular attention shall be given to the graphic representation and description attached to the trademark application. In order to make sure to obtain protection, therefore, a monogram should be characterized by a substantial graphic elaboration and be extremely distinctive. Further, to enhance the distinctiveness threshold also the monogram positioning might be considered in the trademark application (especially if the monogram is a 3D mark rather than a figurative one).
In short, one should remember that – just like some aristocratic families from the 14th century – commercial success and legal protection don’t always get along.