Trademarks: the Italian Supreme Court rules on the ‘gold battle’ between food companies Barilla and Saiwa

With the decision no. 5099 dated 5 March 2014, the Supreme Court, upholding the Milan Court of Appeal decision, denied that the word ‘Oro’ (Italian for ‘gold’), as part of the compound trademark ‘Oro Saiwa’, is capable of being distinctive.

The proceeding between the two food companies started in 2002, when Saiwa sued Barilla Alimentare before the Court of Milan claiming the nullity of the sign ‘Oro’ as part of the compound trademark ‘Selezione Oro Barilla’. Saiwa alleged that Barilla’s ‘Oro’ trademark was anticipated by its prior trademarks ‘Oro Saiwa’, ‘Pacco Oro Saiwa’, ‘Pacco Oro’, Italian trademark ‘Oro’ and international trademark ‘Oro’. Furthermore, Saiwa also requested to ascertain the infringement of its trademarks and the unfair competition by the defendant.

Barilla appeared in that proceeding requesting the dismissal of counterpart’s claims and requesting the judge to declare the nullity of trademarks ‘Oro’ owned by Saiwa, as being devoid of distinctive character…

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