Gucci has scored a victory against fellow fashion brand, Guess?, in Australia as of this week. You may recall that Gucci initiated an intense legal battle with Guess? by filing suit in 2009 in New York in connection with the interlocking “G” trademarks that adorn an array of Gucci accessories. Florence-based Gucci, which welcomed new creative director Alessandro Michele relatively recently, accused the comparatively lower-end brand of perpetrating a massive trademark infringement scheme, and was out for blood.
In its first case, which was filed in a New York federal court, Gucci asked to court to order Guess to pay over$221 million in damages. That case closed in 2012 – following a three week trial – with the court finding in favor of Gucci, and awarding the fashion house $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.
Back to the outcome of the action in Australia. Instead of filing a full-blown lawsuit, Gucci filed to oppose the pending registration of two “International Registration Designating Australia” applications that Guess filed. Gucci alleged in its opposition filing that Guess’s applications to register the “G-Shine” trademark (pictured above, right) in classes of goods that cover eyewear and handbags should be denied as the aforementioned mark is too similar to its own trademarks, which predate Guess’s mark. And the Australian Trade Marks Office agreed! According to the decision from the Registrar of Trademarks, Gucci’s high volume of sales and substantial advertising expenditures and other promotions (think: fashion shows) established the level of reputation required for Gucci’s existing trademarks to prevail. As such, Guess is unable to register its G-Shine mark in Australia and thus, unable to reap the benefits of trademark registration.
This ruling does not, however, actually prohibit Guess from selling goods with the G-Shine trademark on them, and reports allege that Guess is, in fact, currently selling bags adorned with the G-Shine mark in Australia. With this in mind, it will not be surprising if Gucci files a trademark infringement lawsuit against Guess in Australia like it has done in New York, Italy, China, and France.
And speaking of the other lawsuits, here is a little refresher of how Gucci has fared. You may recall that Guess won in France. The Paris High Court dismissed Gucci’s infringement claim and revoked three the high fashion house’s trademark registrations. In China, Gucci won. However, the status of that ruling is subject to change, as Guess has appealed its loss to the Jiangsu High People’s Court. In Italy, Guess won in the lower court level, but that initial ruling was partially overturned. The Court of Appeals partially upheld Gucci’s appeal and ordered Guess to pay damages. It rejected the infringement claims but held Guess was liable for unfair competition. The Supreme Court is currently determining damages. It was not a total win for Gucci, though; the court held that three of Gucci’s trademarks were invalid due to lack of distinctiveness.
More to come …