Gucci, Guess and the “G” battle…. the Legal Saga continues…
As the world is glancing over the Fashion Weeks that are taking by storm all the main social media from Instagram to Twitter…. talking about fashion sounds like a MUST.
In these last days a new chapter of the Gucci-Guess legal battle has been written and not in favour of the Italian brand.
The trade mark infringements claims started back in 2009 when Gucci America sued Guess? America first before the New York Federal Court, then before the Milan, Paris and Nanjing (China) Tribunals.
Gucci claimed that Guess?, in violation of the Lanham Act and New York law, infringed the Green-Red-Green Stripe mark, the Repeating GG Pattern, the Diamond Motif Trade Dress (the Repeating GG), the “Stylized G” Design Mark and the Script Gucci Design mark. Furthermore, Gucci also asked Guess? to abandon the “4G Square Repeating Logo”.
The American judge asked the plaintiff to prove that the Diamond Motif Trade Dress had acquired distinctiveness through secondary meaning; the probability of confusion between the Defendant’s trade dress and Gucci’s; and the non-functionality of the trade dress to evaluate whether or not the plaintiff’s mark was entitled to protection.
Judge Scheindlin, in the final decision, found that the Defendant intentionally infringed the “Quattro G” Pattern in brown colourways, barring Guess? from using the above pattern and the Green-Red-Green Stripe. With regard to the “Square G”, Guess? demonstrated that they ignored the Gucci’s Stylized G trade mark, as the American brand started using it before Gucci obtained a TM registration. Indeed, since Guess? has never registered a trade mark to protect its Square G design, the judge held that the defence of prior use was inapplicable in this case. Further, although a $120 million claim, the judge granted Gucci $ 4.648 million in damages.
If the American Court decided in favour of Gucci, the European Courts, instead, ruled in support of the American brand.
Although Gucci stated that the purposes of these lawsuits were to protect the “Made in Italy” quality, the Milan Law Court did not show much patriotism in its 2013 decision.
The Italian Tribunal pointed out that the “G” logo was completely different since the two brands use a diverse font and a laurel crown characterizes the Guess? design. If it is true that both the fashion houses use capital golden letters in their motifs, indeed it is important to highlight that the Guess? one has been changing throughout the years as the defendant demonstrated. Surely, Gucci could not ask for a monopoly over the use of golden capital letters.
Regarding the “Squared G”, the Italian Court held that the letter G might be protected only if it had a peculiar shape and conformation. These characteristics are absent in this case as a capital squared letter is not unique and other fashion houses use this letter, such as Giorgio Armani and Givenchy. As the American judge stated, it is a weak mark. In addition, while the G used by Guess? has a rectangular shape, the Gucci’s one is squared. For this reason, copying can be excluded. The attention of the judges has also been driven to the serial repetition of the G pattern. The reasoning of the Court is particularly interesting as it asserted that when the shape has a “substantial value” and its symbol links a product to a specific company it can be registered. The judge found that the shape affects the product appreciation among consumers since it has a distinctive function rather than an aesthetic one.
In the final decision, the Italian judge decided to reject all the other claims from the plaintiff, ordering the cancellation of Gucci’s diamond pattern, G logo, and “Flora” pattern trade marks on the grounds that they are common motifs in fashion without any distinctiveness.
On Monday 2nd of February, the Paris Law Court rejected Gucci’s claims, finding that Guess? was not guilty of trade mark infringement, counterfeiting, or unfair competition. The Tribunal de Grande Istance exactly as the Italian Court, invalidated three of Gucci’s “G” community and international trade marks, stressing that Gucci cannot expect exclusive use of those marks any longer. For these reasons, the French Court dismissed Gucci’s request for damages, ordering a payment of 30,000 euros in favour of Guess.
The fourth chapter of the saga – the Chinese one – is ongoing.
The Nanjing Intermediate People’s Court, siding with Gucci in claiming that the behaviour of Guess? represents a trade mark infringement and an unfair competition practice, held that the American brand should no longer sell G monogram products, 8G pattern or the cursive font of Guess.
In rendering its decision, the Chinese Court stated that what is relevant in an infringement case is the subjective similarity of the marks rather than the fact that consumers are likely to be confused. The Chinese judge underlined how Chinese consumers are not as sophisticated as the American and European ones. As a consequence, they focus more on the shape of a word to recognize a trade mark since they experience lots of difficulties in distinguishing foreign languages. As it is easy to imagine, Guess did not appreciate this decision and it has been appealed. The final verdict is what the fashion law community is waiting for.
In this context, the totally different solutions given by the four jurisdictions are extremely significant and it is interesting to notice that while the two European Courts ruled in favour of Guess, the overseas Tribunals supported Gucci claims.
In my view, this lawsuit shows how fashion law is extremely underdeveloped, otherwise there would not been such different legal approaches and solutions.
Furthermore, the attitude of the American Judge shows how reluctant some judges and lawyers still are in accepting that a new branch of IP Rights came to existence. Judge Scheindlin, quoting Oscar Wilde, concluded, “it is my hope that this ugliness [fashion] will be limited to the runway and shopping floor, rather than spilling over into the courts”.
Nevertheless, in the last decade many fashion lawsuits have taken place, showing an interesting trend among fashion houses that intend to protect their trade marks and copyright. Without any doubts, Gucci is the brand that most struggles in order to defend its creativity and originality against those who try to imitate its distinctive signs to have commercial benefits.
In conclusion, there are two aspects I would like to point out. The first one is that sometimes such a big and powerful Company decides to start lawsuits as a business strategy. Secondly, considering the massive impact of the social media, fashion bloggers and vloggers, the risk of confusing consumers is really low. Being faithful followers of such influential personalities they are really aware of what is going on in the fashion industry and are more able to recognise fashion marks. It seems clear that the concept of consumers’ confusion, in the Fashion Law field, needs revisiting.