Gucci may enjoy exclusive rights in its famed horsebit trademark for use on footwear in the U.S., but the Italian design house has just been handed a loss in connection with that same mark in a long-running case in Italy. Since 2011, when Gucci discovered and with the help of the Guardia di Finanza – Italy’s financial authority – confiscated horsebit-bearing loafers that were being sold under the Silvano Lattanzi brand name by a retailer in Tuscany, the Kering-owned fashion powerhouse has been facing off against Lattanzi over its allegedly unauthorized and infringing use of the horsebit symbol.
In a complaint filed with the Tribunale di Fermo, an Italian district court, almost a decade ago, Gucci accused Silvano Lattanzi of engaging in counterfeiting by making and selling footwear that prominently featured a horsebit on its upper. Gucci claimed in its suit that a nearly identical horesebit has long-served as an indicator of source for its own wares, thereby, giving rise to the chance that consumers would be confused into believing that Gucci was in some way connected to or had endorsed Lattanzi’s pricey, handmade loafers.
From the outset, counsel for Silvano Lattanzi took issue with Gucci’s claims, arguing that the Lattanzi brand had been using the horsebit buckle at issue since the 1970s, whereas Gucci’s trademark registration for the symbol only dates back to 2005, a significant fact given that Italy’s trademark system operates on a first-to-file basis, meaning that trademark rights are generally acquired only through registration, and not by being the first to use a mark.
Even more significantly, though, Lattanzi challenged the validity of Gucci’s rights in the horsebit mark, arguing that it does not function as a trademark, or in other words, when the symbol is included on Gucci products, it does not serve as an indicator to consumers of a single source of those products. Instead, it is a widely-used symbol in the market, appearing on products not just from Gucci and Silvano Lattanzi, but fellow Italian brands Salvatore Ferragamo and Santoni, among others.image: Silvano Lattanzi
Gucci followed up with evidence that while its first Italian trademark registration for the horsebit was issued in 2005, it has been using the buckle since the 1950s when Aldo Gucci – the son of Gucci founder Guccio Gucci – added a leather loafer, complete with a horsebit, to the house’s lineup of goods. Due to decades of consistent use, sales success, media attention, and significant advertising spending, the horsebit symbol has become synonymous with its brand, and the horsebit-adorned loafers have long been among its best-selling products, Gucci argued.
According to Italian business publication Il Sole 24 Ore, that was not enough to persuade the court, particularly since it was revealed at trial that the horsebit design had already been in use by brands other than Gucci since at least 1938. In a decision issued this week, the Tribunale di Fermo sided with Silvani Lattanzi, determining that the brand is not on the hook for criminal counterfeiting.
In response to the court’s decision, Francesco De Minicis, one of the lawyers for Lattanzi, said on Wednesday that “a distinctive trademark can be registered when there is the novelty. In this case, [Lattanzi] launched an accessory that had already existed for some time.” As for Mr. Lattanzo, himself, who says that his brand was forced to cease production of horsebit-bearing footwear for the duration of the case, he revealed in a statement on Thursday, “After almost nine years, we can finally go back to using our buckle.”
A rep for Gucci told TFL that they cannot comment on the matter. It is not yet clear whether the brand intends to appeal.