By decision no. 3308 dated September 15, 2014, the Court of Appeal of partially upheld the appeal promoted by Guccio Gucci S.P.A. and Luxury Goods Italia S.P.A. (hereafter together: “Gucci”) versus GUESS? INC. and GUESS ITALIA
S.R.L. (hereafter together: “Guess”) by recognizing the existence of unfair competition acts (and specifically, servile imitation, passing off and parasitic competition) and thus recognizing, consequently, the right of Gucci to obtain a monetary compensation from Guess.
The Court of Appeal stated that, in all the cases that have been considered, Guess offers on the market products with a style that remembers, in relation to “the shapes, the shades, the materials, the graphic or decorative choices, or, furthermore, in relation to the combination of all these elements together”, the style created by Gucci in its recent collections.
The Court of Appeal, instead, confirmed that three of Gucci’s trademarks are invalid due to a lack of distinctiveness. In particular, two of these trademarks consist of the “G” letter (Italian Trademarks nn. 1057601 and 1057600, International Trademarks nn. 940491 and 940490, covering also the European Community), and the third is the trademark known as “Flora” (Italian trademark n. 971291, CTM trademarks nn. 4462735 and 5172218). The Court of Appeal stated that, on one hand, the “G” letter placed on all the four corners of a rhombus made of spots, also lacks of distinctiveness; on the other hand, the Court of Appeal found that the core element of the “Flora” trademark is purely aesthetic and ornamental and it consists of elements that could be used in every floral depiction. Consequently, this trademark can not be protected under the Italian law.
Furthermore, the Court of Appeal confirmed the judgement provided by the Court of Milan in first instance ruling that Gucci’s trademarks, with reference to those that are still valid, are not counterfeited by Guess. In particular, the Court of Appeal excluded the counterfeiting of the trademark of the two reflected and inverted “G”s in consideration of the fact that, by an overview, there are remarkable differences from a graphic point of view, which are able to exclude a risk of confusion between the two trademarks; as regards to the trademark which has as an object the “green-red-green” tape, there is not a risk of confusion with the “brown-red-brown” tape used by Guess, because of the different colour used by the two fashion houses; according to the Court of Appeal the word “Gucci”, wrote with italic style, can not be confused with the word “Guess” written in italic and underlined, considering the fact that the two different written words refer to different fashion houses; coming to the last series of squared "G", the Court held that the similarity between the texture used by Guess and the above mentioned Gucci mark is minimal, as in the first case letters are not arranged in series, one after the other, but interspersed with a different graphic that can exclude confusion.
All we can do, for now, is to wait and see if – further to this second round – the two fashion houses will take part to another match in front of the Italian Supreme Court.