GUCCI WINS TRADEMARK CASE AGAINS GUESS

Gucci America has won a bitter trademark infringement case against Guess, with a
New York court awarding the US arm of the Italian luxury goods group damages of
$4.66m after a three-week trial.
Gucci launched proceedings in 2009, claiming that Los Angeles-based Guess, a high-
end mass-market retailer, had directly imitated distinctive hallmarks of the brand that
could confuse consumers, including the four interlocking Gs that make up the
Quattro G design, shading patterns and the groups distinctive red and green striped
logo.
The group has filed similar infringement claims against Guess in China, Italy and
France.
US District Judge Shira Scheindlin decided in favour of Gucci on four of five
trademarks at issue. The defendants included Guesss exclusive footwear licensee
Marc Fisher Footwear, the Max Leather Group and Swank.
Patrizio Di Marco, Guccis president and chief executive, applauded the ruling, saying
he will continue to take all necessary action in order to preserve the integrity,
exclusivity and distinctiveness of the PPR-owned brand.
We are extremely pleased with this decision, which should serve as a powerful
deterrent for those who attempt to unlawfully exploit Guccis intellectual property
rights.
However the $4.66m payout issued by the court is a fraction of the original claim,
which initially totalled $120m.
Whilst celebrating the win, the Gucci team may need to consider whether they should
have taken action sooner, as this has significantly reduced the levels of damaged
awarded, says Fiona McBride, partner and trademark attorney at law firm Withers &
Rogers. Its important that brands spot and take action against potential trademark
infringements promptly.Failing to do so could dilute or damage their claim.
Lawyers for Guess said that Gucci had no right to claim infringement because it sat
on its rights for at least seven years before suing. Guess also argued that Guccis
surveys failed to prove that customers would be misled by the designs and that there
was no evidence of lost or diverted sales.
The relationship between law and the fashion world came into the spotlight earlier this
year after Christian Louboutin filed a trademark protection regarding red shoe soles
against Yves Saint Laurent in New York.
The distinct lack of intellectual property harmonisation within the luxury sector in the
US has fuelled numerous attempts by brands and the Council of Fashion Designers of
America to pass new legislation to stem the impact of trademark and copyright
infringement. Patenting issues and counterfeit goods are estimated to cost the fashion
industry billions each year.
The latest attempt, The Innovative Design Protection and Piracy Prevention Act, is
expected to be taken up by the US Congress this autumn.