In a decisive 44-page ruling, a court in Paris overruled every trademark infringement claim asserted by Gucci against American clothing retailer, Guess? Inc. in the Italian design house’s ongoing fight in what it claims is a “massive, complicated scheme to knock-off Gucci’s best-known and iconic designs.” Late last week, the Tribunal de Grande Instance found that Guess? did not engage in trademark infringement, counterfeiting, or unfair competition. Instead, the three-judge panel invalidated Gucci’s “G” community and international trademarks, which means the company, known for its exceptional Italian craftsmanship, cannot claim exclusive use of those marks any longer. This latest decision quells Gucci’s hopes of recouping “losses” it claims it suffered as a result of Guess? “diluting its brand” by imitating the Gucci design.
The Tribunal de Grande Instance also precluded Gucci’s request for roughly $62 million in damages. Instead, the Kering-owned brand, which was launched in Florence in 1921 as a small leather saddlery shop, was ordered by the court to pay Guess? approximately $34,000. Gucci says it plans to appeal the Paris court’s decision.
In fashion law, context is everything, and the French court’s decision cannot be viewed in a vacuum if we are to understand trademark law more broadly. In an epic fashion fight that has lasted the better part of five years, Guess? has been accused of ripping off four key designs, which include Gucci’s green and red stripe; the interlocking “G” pattern; the square “G;” and the brand name’s script font.
The letter “G” is a protectable commodity, according to Gucci. The high-end luxury brand – whose creative director, Frida Giannini and CEO, Patrizio di Marco recently stepped down – has been a serial lawsuit filer: The house of Gucci has forum shopped all over the globe, from New York and Milan to China and Paris to initiate trademark infringement claims and establish its ownership over the double “GG” logo. Gucci’s trademark infringement suits have received inconsistent treatment in each country.
In a 2009 filing in the Southern District of New York, Gucci claimed that Guess?, an American fashion and jean brand founded by the Marciano brothers in 1981, infringed on its trademarks by imitating the four specific Gucci signatures described above. In a decision from 2012, U.S. District Judge Shira A. Scheindlin agreed, siding with the fashion house that Guccio Gucci built. The New York federal court awarded the leather goods label $4.66 million dollars. The tribunal also granted Gucci a permanent injunction against Guess?’ use of three of the four challenged designs. However, Gucci did not walk away a clear victor, as it was awarded a small fraction ($4.66 million) of the $120 million in damages it had sought in connection with its trademark infringement and dilution claims.
Over 4,000 miles away, Gucci failed to secure trademark protections in the country where it originally branded itself (Italy). In 2013, a Milan appeals court rejected all infringement claims brought by Gucci against Guess? in part because the court held that Gucci’s trademarks were invalid due to a lack of distinctiveness. The 83-page judgment averred that the “G” stamp was common in the world of fashion, and dissimilar from the brand’s interlocking “G” logo developed by Aldo Gucci, son of Guccio. The Italian Court also ordered the cancellation of Gucci’s diamond pattern, “G” logo, and Flora pattern (see one variation of the celebrated Gucci print created in connection with a personal request from the Princess of Monaco Grace Kelly pictured below) trademarks.
In Asia, the Nanjing Intermediate People’s Court of China sided with Guccio Gucci S.p.A. — owner of the Gucci fashion band’s trademarks and the intellectual property rights of its products — in a dispute with Guess? over trademark infringement and unfair competition activities in China. Interestingly, the Nanjing Intermediate People’s Court decided infringement cases hinge on whether the marks look subjectively similar, not whether consumers are likely to be confused, the latter of which is the key inquiry for trademark infringement matters in the U.S. Guess? has appealed to Jiangsu Higher People’s Court.
Typically, a principal in trademark law is that infringement only exists when consumers are likely to be confused by the marks. Will a consumer confuse Gucci’s Jackie O hobo bag (“the Bouvier”) with Guess?’s Cheatin’ Heart Avery Satchel? It is powerful evidence of infringement when the trademark owner can show that the average reasonably prudent consumer is confused.
In the digital era where artistic imitation is abundant, Gucci seeks to significantly dial down creative copying as evidenced by its barrage of lawsuits against Guess?. The final chapter in the trademark saga between Gucci and Guess? has yet to be written, as the appeal process is likely to continue through 2015. More to come …
STACY SLOTNICK, Esq. holds a J.D., cum laude, 2008, from Touro Law Center and a B.A., summa cum laude, 2005, from the University of Massachusetts Amherst Commonwealth Honors College. Stacy performs a broad range of duties as an entertainment lawyer, which include drafting and negotiating contracts; pitching clients for high-caliber media coverage; addressing and litigating trademark, copyright, patent and other IP issues; advising on branding development; and consulting on design protection, licensing and merchandising. For more from Stacy, follow her on Twitter.