Gucci has lost yet another round in its ongoing battle against Guess?. The Florentine design brand accused the comparatively lower-end brand of perpetrating a massive trademark infringement scheme, initially filing suit against Guess? in 2009 in New York, claiming that the interlocking “G” trademarks that adorn an array of Guess accessories infringe its own “G” trademarks. Gucci was awarded only a small fraction of the $221 million damages award it was seeking (a mere $450,000) in that case, and subsequently filed suit against Guess? on the same grounds in Italy, Australia, China, and France, and initiated proceedings with the European Union (“EU”) Intellectual Property Office.
Well, as of this past week, the EU General Court (Third Chamber) ruled against Gucci in two trademark matters: The first concerned Guess?'s existing EU registration for an interlocking “G” mark and the second involved Guess?’s pending application for a trademark consisting of interlocking “G”s.
In Gucci’s filing to formally oppose Guess?’s pending trademark application, which Gucci filed in June 2012, Gucci 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 “G” logo. The General Court rejected Gucci's claims and as a result, has allowed Guess?'s application to move forward with the registration process.
Similarly, the Court refused to invalidate Guess?'s existing trademark registration, in both instances confirming the Board of Appeal's holding that Guess?'s mark is a complex symmetrical pattern of four opposed and crisscrossed elements, rather than as interlocking “G”s, thereby making it different enough from Gucci’s existing trademarks.
The Court also confirmed the Board of Appeal's holding that the public "will not perceive [Guess?'s mark] to include the capital letter ‘G’, but rather an abstract ornamental motif.” The Court further held that Guess?'s logo "could be perceived both as reproducing stylized letters, such as the capital letter ‘X or the letter 'e', and as a combination of figures and letters, such as the figure '3' and the letter 'e.'" In contrast, the Court found that Gucci's marks clearly consist of “the capital letter ‘G’ positioned in a normal way and that that on the right, which was inverted, mirrored it.”
As such, the General Court held that "the marks at issue create a different visual impression” and even if Gucci can be shown that Guess?’s logos were originally based on the letter “G,” that does not change the fact that the two brands’ trademarks are “dissimilar,” of “completely different structure,” and give a “completely different overall impression.”
Since Gucci, the party that initiated the proceedings, was unsuccessful, the court has ordered it pay the relevant costs associated with the case, “including the costs incurred by Guess? before the Board of Appeal of the European Union Intellectual Property Office.”
* The cases are Guccio Gucci SpA v EUIPO, Cases T-461/15 and T-753/15.