In the latest twist in the long-running, multi-national trademark battles between Gucci and the mid-market fashion brand Guess, the European Union ("EU") General Court has held that Guess’s interlocking “G’s” logo is dissimilar to an array of Gucci’s logos and therefore, cannot be blocked by the Italian design house. The decision – which may be subject to final appeal before the European Union Court of Justice – follows a number of mixed decisions from courts in the U.S., France, Italy, Australia, and China.
You may recall that Gucci initially filed a trademark infringement suit against Guess? in a New York federal court, asking to court to order Guess to pay over $221 million in damages for what the Italian design house called a massive trademark infringement scheme perpetrated by Guess?. That case closed in 2012 – following a three-week trial – with the court finding in favor of Gucci, and awarding the fashion house just $4.7 million in damages for Guess's infringement of its trademarks. Further, Judge Scheindlin, who presided over the case, awarded Gucci a permanent injunction against Guess's use of three of the four challenged designs at issue. The fashion house has since filed suits in Italy, France, China, and Australia – and the results have been mixed.
In regards to the case at hand, Guess? registered a European Union (“EU”)-specific trademarks for its logo in relation to cosmetics, apparel and accessories in classes 3, 9, 14, 16, 18, 25 and 35, as well as in the class that covers digital accessories. Gucci filed to invalidate Guess?’s pending trademark application, which Guess? filed in June 2012, asserted that it already holds EU trademark rights in at least five trademarks that consist of an interlocking “G” pattern. The Italian design house further argued that Guess?'s logo is confusingly similar to all of its earlier interlocking “G” logos.
Most recently, the EU Fourth Board of Appeal rejected both Gucci’s invalidity application and opposition, on the grounds that the logos were dissimilar. On appeal by Gucci, the EU General Court upheld the Board of Appeal’s decisions, stating that the marks are, in fact, dissimilarly, particularly given that “the average consumer normally perceives a mark as a whole and does not analyze its various details – only rarely having a chance to compare marks directly, and so having to rely on an imperfect recollection.”
With that in mind, the court, nonetheless, analyzed the two parties’ logos and found – among other things – that the relevant public would likely not perceive the capital letter “G” in the Guess? logo as the letter “G” but instead, as an abstract ornamental motif without world elements. In contrast, for most of the Gucci logos, the court held that capital letter “G” could be easily perceived in those logos. The Court held that, assessed as a whole, the marks were therefore “completely different.”
Since the marks were found to be dissimilar, the Court held that it was unnecessary to examine Gucci’s other arguments relating to the “allegedly exceptionally high” level of distinctiveness of the Gucci logos, their reputation, or their membership of a family of marks. It also followed that there could be no likelihood of confusion between the marks.
The Court held that it also followed that the existence of the Guess? logo in the market would not take unfair advantage of or be detrimental to the Gucci logos, as Gucci had argued. The Court acknowledged case law establishing that unfair advantage or detriment could result from a lower degree of similarity between marks, provided that it is sufficient for the relevant public to make a link between them. However, that required “some similarity, even faint,” and the Court ruled out any similarity between the marks in this case.