Have you ever thought of the “Hop On Hop Off” bus as a colour registered trade mark?

1st February 2022

By precautionary order of March 9, 2021 – then upheld by order of May 10, 2021 – the IP Specialised Division of the Court of Milan provided some interesting guidance on the subject of validity and infringement of colour trademarks and look-alikes in a case concerning the famous “Hop On Hop Off” buses:

Guidance provided by the Court of Milan

Validity assessment

The Court of Milan had to preliminary verify the validity of the following colour and figurative trademarks on the famous “Hop On Hop Off” buses:

Italian trade mark registration no. 0001351155

EU trade mark registration no. 009317025

Italian trade mark registration no. 362018000051727

First, the Court held that the colour trademarks (Italian trademark no. 0001351155 and EU trademark no. 009317025) for the red-yellow colour of “Hop On Hop Off” buses were distinctive, since they consisted of a specific  combination of colours clearly identifiable by the public. In particular the yellow strip, which starts from the roof of the bus on the front side and extends to the front glass door of the bus, was considered to be unusual and distinctive.

In addition, the Court upheld the validity of the Italian trademark registration no. 362018000051727 for the sign:

Indeed, the Court denied that the expression “Hop On Hop Off” consisted “exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade” (Art. 13 (1)(a) of Italian IP Code), even if there had been a certain level of slang associated with the expression within the tourist sector.

Infringement

Following the validity assessment, the Court held that the use of “Hop On Hop Off” on competitor’s buses constituted infringement of the “Hop On Hop Off” trade mark sign (no. 362018000051727).

However, the Court held that there had been no infringement of the colour trademarks (no. 0001351155 and no. 009317025) by the following competitor’s buses:

According to the Court, the lack of reproduction of the yellow strip, as well as the stickers applied to the competitor’s buses would be sufficient to exclude any likelihood of confusion (bearing in mind the fairly low distinctiveness of the colour trademarks).

Unfair competition assessment

Despite the non-infringement finding in relation to the colour trademarks, the Court found that the similarities between the buses were relevant to unfair competition rules. In particular, the Court deemed there had been a violation of:

• Art. 2598(1) of the Italian Civil Code, in that the “signs” characterising the overall appearance of the competitor’s buses are likely to cause confusion in the minds of the public;
• Art. 2598(2) of the Italian Civil Code, concerning look-alikes, in that the strong visual similarity between “Hop On Hop Off” buses and those of the competitor means that the latter takes advantage of the more widespread reputation – also at an international level – of the “Hop On Hop Off” buses.

Comment

This order is an interesting example of a case where the narrow scope of trademark protection afforded by the Court was compensated for by unfair competition rules.

In addition:

• it represents an unusual enforcement of look-alikes to non-fast-moving products, where fast-moving refers to low-priced consumer products that are purchased without special attention and with a relatively high frequency; and
• provides useful guidance regarding limits within which word trademarks, even if in foreign languages, can lose their distinctiveness and become customary in the language or in the established practices of the trade.