This article first appeared on WTR Daily, part of World Trademark Review, in May 2013. For further information, please go to www.worldtrademarkreview.com.

The Milan Court of First Instance has dismissed all claims by Italian fashion house Gucci in a four-year trademark infringement and unfair competition dispute between Gucci and US company Guess? Inc and others (ie, Zappos.com Inc and Luxury Goods Italia SpA), better known as the ‘Gucci v Guess
saga’ (Decision 6095/2013, January 10 2013, published on May 2 2013).

The court, in an 83-page ruling, not only rejected all of Gucci’s claims, but also ordered the cancellation of several marks belonging to Gucci on the grounds that they lacked distinctive character:

– three Italian trademarks (Nos 1057601, 1057600 and 971291);
– two international trademarks designating the European Community (Nos 940491 and 940490); and
– two Community trademarks (Nos 4462735 and 5172218).

The saga began on May 5 2009 when Gucci initiated a legal action against Guess in Milan, after engaging in a similar battle in New York. In a decision dated May 5 2012, the US District Court for the Southern District of New York found that Guess had infringed three of Gucci’s trademarks (ie, the ‘double G’ device, the ‘green-red-green’ device and the ‘square G’ device). The court ordered Guess to stop using the infringing signs and to pay damages of over $4 million to Gucci.

Before the Italian court, the Florence-based fashion house claimed that Guess:

– infringed its famous and universally recognised trademarks, resulting in a parasitic association between Guess and Gucci’s trademarks and, more generally, between Guess and Gucci’s image and reputation; and
– engaged in counterfeiting and unfair competition pursuant to Article 2598 nn 1, 2 and 3 of the Italian Civil Code.

In response, Guess asked the court not only to dismiss Gucci’s claims, but also to declare that Gucci’s trademarks were invalid on absolute grounds (or, alternatively, to revoke the marks for non-use).

The Court of Milan ruled that Gucci’s ‘diamond pattern’, ‘floral motif’ and ‘square G’ marks were rather common in the world of fashion, and found that Guess’ ‘G’ logo and ‘four G’ logo were different from Gucci’s ‘G’ logo and ‘interlocking double G’ pattern, respectively.

Moreover, the court rejected the unfair competition claims, considering that the reputation of the marks at issue excluded any risk of confusion.

Gucci has announced its intention to appeal the decision, which it considers as potentially dangerous for the protection of products “made in Italy”.

Gucci has also filed lawsuits against Guess in Paris and Nanjing. Therefore, after two matches disputed in the United States and Italy, it is now up to the French and Chinese judges to issue their judgments in this saga.


Leave a Reply

Your email address will not be published. Required fields are marked *