Italian luxury brand Guccio Gucci SpA announced on June 17 that it would appeal against the Court of Milan’s recent decision to dismiss its trademark infringement case against the Los Angeles-based clothing line Guess Inc.
In May this year, the Italian court rejected Gucci’s claims that Guess had infringed its diamond pattern, ‘G’ logo and ‘Flora’ pattern trademarks, and ordered that the marks be cancelled.
According to a report released by Italian law firm NCTM Studio Legale Associato, the court decided Gucci’s floral pattern trademarks should be invalidated as they are “capable of conferring substantial value to the product,” which violates Article 9 of the Italian IP code, because, the court found, they are “particularly sophisticated and aesthetically pleasing.”
The court also found there were graphic differences between Gucci and Guess’s signs, and that the presence of the well-known mark 'Guess' on all of the products was sufficient to avoid risk of consumer confusion.
In a statement, Gucci said it was “surprised and disappointed with the outcome of the first instance sentence handed down by the Court of Milan.”
Gucci claims the decision contradicts the US District Court for the Southern District of New York’s ruling handed down in 2012, which found Gucci’s marks were valid, and saw the brand awarded $4.66 million in damages.
Gucci’s statement went on to say that it “considers this sentence as potentially dangerous for the protection of the inestimable wealth of intellectual property represented by ‘Made in Italy’ products.”
In 2009 Gucci brought a series of suits against Guess in the US, Italy, France and China, alleging trademark infringement and unfair competition relating to the marks.
Andreas Lubberger, chairman of MARQUES’ famous and well-known marks team, said that while it is not unusual for parallel cases to receive different rulings in different countries, the Italian court’s reasoning was out of the ordinary.
He said that in this type of case the risk of confusion needs to be assessed by deciding whether the competitor is trying to benefit from the reputation of the other company – not just by copying the marks – but by copying the trade dress and “creating a reference to the well-known mark without the risk of confusion.”
Referencing the “red sole” case between Christian Louboutin and YSL, he added that in these cases the alleged infringer will usually try to demonstrate the trade dress is standard for these types of products.
Lubberger said it is likely that the appeals court will come to a different decision, and added that Gucci’s marks are strong: “Normally one would say that a single letter or a floral design if registered as a trademark would only convey a very small and narrow area of protection, where even slight alterations to that sign or design would fall out of the scope of protection,” he said.
“However, Gucci has enhanced protection as a well-known trademark because the marks have been used extensively and a lot of people know them ... they have an acquired distinctiveness which broadens the scope of protection.”
Gucci’s infringement suits in France and China are still in progress. Lubberger said he is “fairly confident” that Gucci will get support in France but depending on where the case is fought in China, “it’s an open game.”
This article was first published on 19 June 2013 in World IP Review
Gucci, Guess, trademark infringement, G logo, floral trademark