With judgment no. 6095/2013, published on May 2, 2013, the Court of Milan fully dismissed the infringement and unfair competition claims brought by Gucci against Guess. Gucci accused Guess of imitating some of the most famous trademarks owned by the Florence maison (i.e. the word "Gucci" in italics, the "G" in italics, the two opposed "G’s", the "diamond pattern" consisting of the "G" and the lozenge pattern, the squared "G", the green-redgreen striped ribbon, and the “Flora” pattern). Were also disputed, under unfair competition claims, also a number of Guess’ bags, shoes and other accessories.
The Court dismissed Gucci trademark infringement claims, mainly due to: i) the graphic differences between the signs, as to the font, thickness and inclination of the letters, ii) the visible presence on all the defendant’s products of the well-known trademark "Guess", that was able to avoid any confusion for the "particularly observant and circumspect" consumer.
The Court also discarded another of Gucci’s claims, concerning the imitation of its "diamond pattern" trademarks (Italian trademark n. 876580 and Community trademark n. 2751535), allegedly replicated by Guess on its bags and accessories (both shown below).
Click here to view.
In this regard, the Court stated: "Guess’s pattern has nothing to do with Gucci’s", as the overall impression of the two designs is different, even if they are compared at distance.
In addition, the Court partially upheld Guess’s counterclaim for invalidity of certain Gucci’s trademarks, namely the letter "G" inserted in a radial dotted pattern, (Italian trademarks no.1057601 and no. 107600, Italian portion of International trademark no. 940490, and Community trademark no. 5172218), and the "Flora" pattern (Italian trademark no. 971291 and Community trademark no. 5172218), all represented below.
Click here to view.
Regarding the "G" letter trademarks, the Court stated that they are devoid of any distinctive character due to the fact that i) the letter "G" is not characterized by any particular style of writing and ii) the dots are "common" and "barely significant". The Court also stated that the lozenge pattern was a decoration widely used in the fashion industry.
The other floral trademarks were invalidated due to the fact that the pattern was capable of conferring substantial value to the product, this being in breach with art. 9 of the Italian IP Code. In particular, the Court affirmed that the ornamental and aesthetic aspect of the sign, "particularly sophisticated and aesthetically pleasing", overcame the trademark distinctive character and entirely determined its market appeal.