Protection of position trademarks in Italy: Diesel vs Calvin Klein's battle over the stripe on the jeans pocket
1. Introduction
One modern marketing strategy adopted by fashion companies is to place a sign - such as a word, graphic or three-dimensional figure - in a specific location on the good.
Due to its specific placement, the sign may be perceived by the public as a trademark — that is, an arbitrary and distinctive symbol that indicates the good’s origin. Legally, a trademark consisting of a sign placed to a specific location on the product is known as a positional trademark.
There are several examples of this category of trademark in the fashion industry. These include the yellow, wide-stitched welt of Dr. Martens boots, the distinctive star with two truncated points on Golden Goose sneakers, Valentino's placement of studded Rockstud shoe model as well as the laurel wreath logo applied on the left breast of Fred Perry’s polo shirts.
2. Diesel vs. Calvin Klein: a brief summary of the legal dispute
The fashion industry has also been fighting over positional trademarks for some time now. In particular, a legal dispute has been ongoing in Italy for a few years now between fashion companies Diesel and Calvin Klein concerning the alleged infringement of Diesel’s exclusive rights to a distinctive sign that can be considered a positional trademark. Specifically, in its order of February 10th, 2025, the Supreme Court ruled on a legal dispute concerning infringement of the following trademark owned by Diesel: “THE IMAGE OF A NARROW STRIP OF FABRIC OF ANY COLOUR ATTACHED TO THE FIFTH POCKET OF A PAIR OF TROUSERS AS SHOWN IN THE TRADEMARK REPRESENTATION”.
The fashion industry has also been fighting over positional trademarks for some time now. In particular, a legal dispute has been ongoing in Italy for a few years now between fashion companies Diesel and Calvin Klein concerning the alleged infringement of Diesel’s exclusive rights to a distinctive sign that can be considered a positional trademark. Specifically, in its order of February 10th, 2025, the Supreme Court ruled on a legal dispute concerning infringement of the following trademark owned by Diesel: “THE IMAGE OF A NARROW STRIP OF FABRIC OF ANY COLOUR ATTACHED TO THE FIFTH POCKET OF A PAIR OF TROUSERS AS SHOWN IN THE TRADEMARK REPRESENTATION”.
In the first two proceedings, the Court of Milan and subsequently the Milan Court of Appeal dismissed Diesel’s claim that its registered trademark was infringed by the stripe affixed by Calvin Klein to the pocket of its jeans, which was similar to Diesel’s one in shape and position.
At the end of the two proceedings before the Milan Courts, Diesel filed an appeal before the Supreme Court on three grounds, relating to trademark infringement and unfair competition concerning the diagonal stripe. Meanwhile, Calvin Klein filed a cross-appeal, arguing that the positional Diesel trademark was invalid due to a lack of distinctiveness.
3. The Supreme Court judgement
3.1. The validity of the Diesel trademark featuring a diagonal stripe on the jeans pocket
3.1. The validity of the Diesel trademark featuring a diagonal stripe on the jeans pocket
First, let’s consider the Supreme Court’s analysis of Calvin Klein’s cross-appeal. As is well known, the trademark validity is indeed a prerequisite for determining infringement.
According to Calvin Klein defensive arguments, Diesel’s positional trademark consists solely of the stripe itself, without the word 'DIESEL', and therefore lacks distinctiveness.
However, the Supreme Court upheld the Milan Court of Appeal’s judgement, ruling that “applying a stripe of the same shape in the same position on an indeterminate number of garments without distinction between models, collections, or commercial seasons” is sufficient to render the stripe recognisable as a trademark. According to the Milan Court of Appeal — a view confirmed the Supreme Court — it is the diagonal orientation of the stripe that is “unconventional compared to the customary branding practices of products in the sector” and capable of enhancing the distinctive character of the trademark.
On the other hand, regarding the distinctive nature of the Diesel positional trademark, however, the Supreme Court therefore upheld the Milan Court of Appeals' judgement that the diagonal stripe trademark was considered distinctive at the time of filing. This meant that it was not necessary to investigate whether the trademark had acquired a secondary meaning. Finally, the Supreme Court also ruled that the positional trademark registered by Diesel could not be classified as 'trivial, simple or elementary', the registration of which is prohibited under Article 13 of the Italian IP Code.
According to Calvin Klein defensive arguments, Diesel’s positional trademark consists solely of the stripe itself, without the word 'DIESEL', and therefore lacks distinctiveness.
However, the Supreme Court upheld the Milan Court of Appeal’s judgement, ruling that “applying a stripe of the same shape in the same position on an indeterminate number of garments without distinction between models, collections, or commercial seasons” is sufficient to render the stripe recognisable as a trademark. According to the Milan Court of Appeal — a view confirmed the Supreme Court — it is the diagonal orientation of the stripe that is “unconventional compared to the customary branding practices of products in the sector” and capable of enhancing the distinctive character of the trademark.
On the other hand, regarding the distinctive nature of the Diesel positional trademark, however, the Supreme Court therefore upheld the Milan Court of Appeals' judgement that the diagonal stripe trademark was considered distinctive at the time of filing. This meant that it was not necessary to investigate whether the trademark had acquired a secondary meaning. Finally, the Supreme Court also ruled that the positional trademark registered by Diesel could not be classified as 'trivial, simple or elementary', the registration of which is prohibited under Article 13 of the Italian IP Code.
3.2. The likelihood of confusion between the stripe registered as a trademark by Diesel and that used by Calvin Klein
Having rejected Calvin Klein’s cross-appeal and upheld the Milan Court of Appeal’s judgement on the validity of the Diesel positional trademark, the Supreme Court considered whether Diesel’s exclusive rights to its diagonal stripe trademark has been infringed by Calvin Klein.
On this matter, the Supreme Court first confirmed the legal principle that the assessment of the likelihood of confusion between trademarks should not be made 'analytically, through a detailed examination and separate consideration of each individual element, but in a comprehensive and synthetic manner', and 'with regard to the set of salient graphic and visual elements, through an impression-based assessment which disregards the possibility of a careful comparative examination, and which must be based on the normal diligence and prudence of consumers of that type of product, since the comparison must be made between the trademark seen by the consumer and their recollection of the other trademark'.
In light of this approach, the Supreme Court upheld the ruling that there had been no infringement of the Diesel positional trademark, given that:
- the element of the Diesel positional trademark with the “greatest visual impact” is the “diagonal orientation of the stripe”, a feature absent from the horizontal Calvin Klein stripe;
- the Calvin Klein stripe is positioned just below the upper edge of the pocket, while the Diesel one is positioned lower down, approximately halfway;
- the Diesel label is not bordered by rivets, unlike the Calvin Klein stripe;
- Calvin Klein always uses its stripe alongside the word trademark 'CALVIN KLEIN';
- both trademarks pertain to high-end clothing products, to which consumers typically pay more attention than to lower-tier goods.
Therefore, the Supreme Court rejected the claims regarding the alleged infringement of the Diesel positional trademark based on the primary characteristic that distinguishes the Diesel stripe from the Calvin Klein stripe: the diagonal pattern that gives the former its distinctive character. Furthermore, the above factors were also taken into account to rule out any possibility of public confusion when comparing the marks in question.
4. Conclusion: some practical tips for fashion companies looking to place a positional brand
The legal disputes between Diesel and Calvin Klein in Italy provide valuable insights for fashion companies considering (i) enforcing positional trademarks and (ii) using signs similar to competitors’ positional trademarks. With regard to the first ones, the Supreme Court reaffirmed that the position and the distinctive diagonal pattern of the stripe on Diesel jeans are elements that can make such a positional trademark distinctive in itself, without requiring proof of acquired distinctiveness through long-term use.
Therefore, the Supreme Court’s decision confirms that a trademark which might otherwise be considered generic can be enforced as a positional trademark if its placement on the product differs significantly from that of competitors' products.
Finally, regarding companies intending to use a sign similar to an earlier positional trademark, the Supreme Court ruled that it does not constitute an infringement if such use differs in terms of form and placement. This is particularly true when a third competitor uses the sign alongside the name of their business name, since both the Milan Court of Appeal and the Supreme Court have taken this into account when ruling on infringement of the Diesel trademark.
Having rejected Calvin Klein’s cross-appeal and upheld the Milan Court of Appeal’s judgement on the validity of the Diesel positional trademark, the Supreme Court considered whether Diesel’s exclusive rights to its diagonal stripe trademark has been infringed by Calvin Klein.
On this matter, the Supreme Court first confirmed the legal principle that the assessment of the likelihood of confusion between trademarks should not be made 'analytically, through a detailed examination and separate consideration of each individual element, but in a comprehensive and synthetic manner', and 'with regard to the set of salient graphic and visual elements, through an impression-based assessment which disregards the possibility of a careful comparative examination, and which must be based on the normal diligence and prudence of consumers of that type of product, since the comparison must be made between the trademark seen by the consumer and their recollection of the other trademark'.
In light of this approach, the Supreme Court upheld the ruling that there had been no infringement of the Diesel positional trademark, given that:
- the element of the Diesel positional trademark with the “greatest visual impact” is the “diagonal orientation of the stripe”, a feature absent from the horizontal Calvin Klein stripe;
- the Calvin Klein stripe is positioned just below the upper edge of the pocket, while the Diesel one is positioned lower down, approximately halfway;
- the Diesel label is not bordered by rivets, unlike the Calvin Klein stripe;
- Calvin Klein always uses its stripe alongside the word trademark 'CALVIN KLEIN';
- both trademarks pertain to high-end clothing products, to which consumers typically pay more attention than to lower-tier goods.
Therefore, the Supreme Court rejected the claims regarding the alleged infringement of the Diesel positional trademark based on the primary characteristic that distinguishes the Diesel stripe from the Calvin Klein stripe: the diagonal pattern that gives the former its distinctive character. Furthermore, the above factors were also taken into account to rule out any possibility of public confusion when comparing the marks in question.
4. Conclusion: some practical tips for fashion companies looking to place a positional brand
The legal disputes between Diesel and Calvin Klein in Italy provide valuable insights for fashion companies considering (i) enforcing positional trademarks and (ii) using signs similar to competitors’ positional trademarks. With regard to the first ones, the Supreme Court reaffirmed that the position and the distinctive diagonal pattern of the stripe on Diesel jeans are elements that can make such a positional trademark distinctive in itself, without requiring proof of acquired distinctiveness through long-term use.
Therefore, the Supreme Court’s decision confirms that a trademark which might otherwise be considered generic can be enforced as a positional trademark if its placement on the product differs significantly from that of competitors' products.
Finally, regarding companies intending to use a sign similar to an earlier positional trademark, the Supreme Court ruled that it does not constitute an infringement if such use differs in terms of form and placement. This is particularly true when a third competitor uses the sign alongside the name of their business name, since both the Milan Court of Appeal and the Supreme Court have taken this into account when ruling on infringement of the Diesel trademark.
Article published in today’s Lexology newsletter written by our partner Massimo Baghetti and our associate Edoardo Badiali.