It was in 2009, when Gucci filed a claim against Guess before the Court of Milan for trademark infringement and unfair competition. Similar actions were filed in New York, Paris and Nanjing.
In its claim, Gucci alleged that Guess had imitated some of its most famous trademarks, such as the word “Gucci” in italics, the “G” in italics, the diamond pattern and floral motifs, the two opposed “G’s”, the “square G” logo, the green-red green striped mark.
After four years of trial, the Court of Milan, with decision n. 6095/2013 published on May 2nd, dismissed Gucci’s claim and ruled in Guess’ favour basically agreeing with all of their arguments. Essentially, the Court based its decision on the fact that there were graphic differences between Gucci and Guess’s marks, and that the visible presence of the well-known mark “Guess” on all of the products was adequate to avoid risk of consumer confusion.
Furthermore, the Court of Milan also declared a number of Gucci trademarks invalid on one hand for lacking of distinctive character (as to the letter “G” inserted into a radial dotted pattern) and on the other hand because the pattern was capable of conferring substantial value to the product in breach with art. 9 of the Italian IP Code (as to the floral trademarks). The cancellation of them was consequently ordered (specifically three Italian trademarks and four trademarks covering the European Community). Gucci’s rights to the square G logo were also rejected.
After the decision was published, the Italian fashion maison showed concerns about the ruling of the Court of Milan that is deemed to be potentially dangerous for the protection of the “Made in Italy”. An appeal has already been filed.
Deign to be mentioned is the fact that the ruling of the Italian Court was issued almost one year after a New York district court (the Southern District Court for the Southern District of New York) stated that Guess had infringed three of Gucci’s trademarks as well as the trade dress. In the 116 page decision, the judge found Guess to be an intentional and willful infringer and as a consequence, Guess was banned from using the three trademarks and the trade dress and ordered Guess to disgorge its profits received from using the trademarks.
The two cases have resulted in different outcomes for the parties. Gucci won the case in New York, and Guess recently won the one in Milan. There are other two pending proceeding before the French and Chinese Courts’. It will be very interesting to read and compare the other decisions once issued.
