Date : April 30, 2018
The trademark battle between Gucci and Guess is one of the most important cases in the history of trademark because of the difference in opinion of different jurisdictions. It all started in the year 2009 when Gucci filed a trademark infringement case for some of its trademarks against Guess in New York Federal Court. In the year 2012 the court at first, awarded $4.7 million and later reduced it to $4.56 million because Gucci could not establish the actual loss it has suffered. Subsequently, in the year 2013, the Milan Court gave a judgement contradicting the New York’s judgement. It rejected all the claims of Gucci, ordering a cancellation of Gucci’s trademarks in Italy.
Gucci accused Guess of copying its designs to take unfair advantage of the fame that Gucci brand has in the fashion market. To put it in their words Gucci said that Guess tried to ‘Gucci-ize’ their products by making logos which similarly deceptive of theirs. The suit concentrated on the Gucci’s square G logo, its green and red stripes, and its interlocking G pattern as designs that Guess had allegedly copied. Gucci sued Guess in multiple jurisdictions like France, Italy, China and Australia.
Judgement of New York Court:
The Court of New York held that Guess infringed the trademarks of Gucci because:
“Guess’sQuattro G Pattern is visually similar to Gucci’s Repeating GG Pattern”.
This, in addition to the similarities in colour scheme and tone “weighed strongly in Gucci’s favour”.
Judgement of Milan Court:
The Court of Milan held that Guess did not infringe any of Gucci’s trademarks, primarily due to:
the graphic differences between the marks, considering the font, thickness and inclination of the letters; and
the visible presence on all of Guess’s products of the well-known “Guess” trademark. The Court held this would avoid any risk of confusion for the “particularly observant and circumspect” consumer.
It also ordered to cancel the registered marks namely the letter “G” inserted into a radial dotted pattern because it lacked distinctive character; and the floral pattern because it is not capable of conferring substantial value to the product of Gucci in Italy.
Gucci’s suit against Guess in the Nanjing Intermediate People’s Court of China was heard in favour of Gucci. This decision in favour of Gucci gave them a second victory in this trademark battle against Guess in International Jurisdiction. There were several cases against Guess before the Courts of different jurisdictions such as France, Australia and Milan Court which were pending till recently, before the two brands made an agreement between each other
Recently after a long battle of more than nine years, on 18th April 2018, the representatives of both the companies came forward and confirmed that they both entered into an agreement “which will result in the conclusion of all pending Intellectual Property Litigations and Trademark Office matters worldwide.” The terms of the agreement were not disclosed. “The agreement is an important step for both companies in recognizing the significance of protecting their respective intellectual property portfolios and design creativity,” both the companies said in a joint statement.
It seems like the nine-year-old trademark battle has come to an end between the two major fashion brands after entering into a settlement agreement with each other, probably to co-exist in the fashion market.