Prada, Chanel, Fendi, Missoni, Versace, and Gucci are all high fashion brands that are instantly identifiable but also have something else in common; their marks consist of the last name of their founders. While trademark laws generally recognize the right to obtain protection in one’s last name, issues often arise when relatives or others with the same last name attempt to capitalize on that recognition. For Guccio and Alessandro Gucci, this resulted in a lawsuit filed by their great grandfather’s company.
Founded in 1921 in Florence by Guccio Gucci, Gucci is known worldwide for its handbags, clothing, footwear, and accessories. The company was family owned for many years, but due to internal conflicts and other business concerns, PPR, a French multinational holding company, became the primary owner in 1999. No Gucci family members remained in the company. Guccio Gucci’s descendants, however, did not leave the fashion world all together. Following in their great-grandfather’s footsteps, in 2008, Guccio and Alessandro Gucci founded ToBeG Srl, a fashion company producing handbags, clothing, footwear, and accessories.
As part of its marketing campaign and Internet presence, ToBeG used the names “Gucci” and “Guccio Gucci.” Gucci Group, a division of PPR, sued ToBeG in Florence for trademark infringement and unfair competition. Finding in favor of Gucci, the court held that ToBeG’s marketing campaign amounted to unfair competition because it took advantage of the goodwill and reputation associated with Gucci’s brand and products.
This is not the first time a member of the Gucci family has faced objection from the company. In 2009, the US District Court for the Southern District of New York enjoined Jennifer Gucci, the ex-wife of former Gucci executive Paolo Gucci, and her daughter from using the Gucci name in connection with a jewelry line called “Gemma by Gemma Gucci” as well as numerous other products. The court awarded Gucci over $650,000 in damages and $1.2 million in attorneys’ fees.
In general, establishing trademarks rights in a last name requires significant use and consumer recognition. This case highlights the fact that once this reputation is established, the scope of protection can be broad enough to stop many kinds of unfair competition and trademark infringement, including by individuals with the same last name. Arent Fox is continuing to monitor cases involving the fashion industry and trademark infringement.