When an Italian pop song becomes evidence of trademark reputation: the Roy Roger’s case

When an Italian pop song becomes evidence of trademark reputation: the Roy Roger's case

Can a hit song help prove that a trademark is well known in court?

In Italy, the answer is yes.

A recent decision of the Florence Court offers an interesting insight into how Italian courts assess trademark reputation and the type of evidence that may be relied upon in infringement and unfair competition proceedings.

For many Italians, Roy Roger's is much more than a denim brand. Established in the 1950s, it became one of the country's most iconic jeans manufacturers, instantly recognizable by the distinctive black triangular label sewn onto the back pocket, a sign that has been registered as a trademark both in Italy and throughout the European Union.

The brand owner recently brought infringement proceedings against a Tuscan company that had adopted an identical triangular device on its clothing.

To strengthen its claim, Roy Roger's owner, Seven Bell Group S.r.l., submitted extensive evidence demonstrating the reputation of its trademark. The evidence included press coverage, participation in major fashion events, substantial sales in Italy and abroad, and the trademark's inclusion in the Italian Register of Historic Trademarks of National Interest, a register reserved for long-established Italian brands, which, in addition to being a recognition of brand owners’ history, tradition and contribution to Italian excellence, may also provide persuasive evidence of a mark's historical significance and reputation.

But one piece of evidence stood out.

The claimant also relied on the fact that Roy Roger's is mentioned in the song "Gli Anni" ("The Years"), one of the most famous songs by the Italian band 883.

For readers outside Italy, the 883 may require a brief introduction.

883 was one of Italy's most successful pop bands during the 1990s, founded by Max Pezzali and Mauro Repetto. Their songs became the soundtrack of an entire generation, often describing everyday Italian life, youth culture and the symbols that defined the decade.

Today, Max Pezzali is filling Italy's largest stadiums with his "Max Forever" tour, attracting tens of thousands of fans who grew up with those songs.

One of the band's greatest hits, Gli Anni, nostalgically recalls life in the 1990s through references that every Italian immediately recognizes, from television shows and football to scooters, friendships and... Roy Roger's jeans.

The song's reference to the brand was considered by the Court as further confirmation that the trademark had become part of Italy's collective cultural memory.

The Florence Court accepted the claimant's arguments and found that the Roy Roger's trademark enjoyed a significant degree of reputation.

Importantly, the decision demonstrates that Italian courts do not limit themselves to traditional commercial evidence when assessing reputation. Instead, they may consider the overall presence of a trademark in society and popular culture.

Evidence may therefore include:

• market share and sales figures;
• advertising investments;
• press coverage;
• participation in trade fairs and industry events;
• international commercial presence;
• consumer recognition;
• inclusion in the Register of Historic Trademarks of National Interest; and
• even references in works of popular culture, where these contribute to demonstrating that the sign is widely recognised by the relevant public.

Based on the reputation established, the Court ordered the seizure of the infringing goods, prohibited further use of the sign and also found that the defendant had engaged in acts of unfair competition.

The Court further considered that, given the extensive reputation of the Roy Roger's trademark, the defendant could not plausibly claim to have acted in good faith.

Businesses entering the Italian market often underestimate the importance of properly documenting the reputation of their brands.

In Italy, establishing trademark reputation may significantly influence the outcome of infringement and unfair competition proceedings, affecting not only the scope of protection afforded to the trademark but also the court's assessment of issues such as bad faith, likelihood of confusion and unfair commercial practices.

A carefully prepared evidentiary strategy can therefore become decisive.

Interpatent regularly assists foreign law firms and international brand owners in coordinating Italian litigation and developing evidence-based enforcement strategies before the Italian courts. If any of your clients are engaging in trademark disputes in Italy involving the proof of reputation, infringement, dilution or unfair competition, please do not hesitate to contact our attorneys, who will be delighted to be of assistance.