According to a May 2013 judgment of the Italian Tribunale di Milano (Court of Milan), the products of Los Angeles-based fashion brand Guess Inc (“Guess”) do not infringe the trade mark rights of Italian luxury brand Guccio Gucci SpA (“Gucci”).

However, according to a May 2012 judgment of the US District Court for the Southern District of New York, they do.

It is not unusual for parallel cases to be heard and determined differently from country to country. Globally-recognised brands commonly expend significant time and resources protecting their intellectual property throughout the world. As there is no such thing as a global trade mark or a global enforcement body, brand owners must separately register their trade marks in every jurisdiction in which they require protection (unless the application is filed with the International Bureau of WIPO with multiple member countries designated, pursuant to the Madrid Protocol).

Gucci has indicated that it intends to appeal the judgment of the Court of Milan, stating that it will continue to take “all action [necessary to] protect its brands, its image, all the results of its creativity and, in particular, its iconic distinctive signs, against anyone wishing to imitate them in parasitical fashion in order to exploit their universal renown and thereby gain undue benefit.”

Decision of the Court of Milan

The Court of Milan held that Guess did not infringe any of Gucci’s trade marks, primarily due to:

  1. the graphic differences between the marks, considering the font, thickness and inclination of the letters; and
  2. the visible presence on all of Guess’s products of the well-known “Guess” trade mark. The Court held this would avoid any risk of confusion for the “particularly observant and circumspect” consumer [Ed: This seems to be a more onerous standard than the “reasonable consumer” test prevalent in Australia. The basis upon which the Court applied this standard is unclear, and may have involved assessment of the price of the products].

The Court of Milan also declared that two of Gucci’s trade marks were invalid, namely:

  • the letter “G” inserted into a radial dotted pattern (pictured in the table below), because it lacked distinctive character; and
  • the floral pattern (pictured in the table below), because it breached Article 9 of the Italian Industrial Property Code, because it was capable of conferring substantial value to the product. This provision operates to prevent people from registering marks which are important or valuable for their functionality. For example, Article 9 also prohibits registration of marks consisting exclusively of the shape which results from the nature of the product, or the shape of goods which is necessary to obtain a technical result.

How does this compare to the situation under US law?

In applying the US Lanham (Trademark) Act 15 U.S.C. § 1051, the Court was required to consider whether Guess’s use of the marks was likely to cause “numerous ordinary prudent purchasers … to be misled or confused as to the source of the product in question because of the entrance in the marketplace of [Guess’s] work”. The US District Court only considered alleged infringement in relation to four of Gucci’s trade marks (pictured in table below), and found that Guess had infringed every one of the marks which were the subject of Gucci’s complaint, except for the italicised word “Gucci”.

Click here to view table.

What is the Australian legal position?

In assessing trade mark infringement in Australia for deceptive similarity, a Court would consider whether a consumer, with imperfect recollection, would be caused to wonder whether or not the competitor’s goods come from the same source. This test requires the Courts to enquire into the surrounding circumstances, for example, the fame of the relevant trade marks and the trade channels in which the products in question are sold in Australia.

The story continues…

The different decisions highlight the potential challenges faced by international brands seeking global protection of marks. They certainly illustrate that reasonable minds can differ over the same subject matter.

In addition to the proceedings in Italy and the United States, Gucci has also brought proceedings against Guess in France and China, alleging trademark infringement and unfair competition. At the moment the parties appear to be sitting on a one-all draw.