WTO Intellectual Property
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 G's that make up the 'Quattro G' design, shading patterns and the group's distinctive red and green striped logo. The group filed similar infringement claims against Guess in China, Italy and France.
US District Judge decided in favour of Gucci on four of five trademarks at issue. The defendants included Guess's exclusive footwear licensee Marc Fisher Footwear, the Max Leather Group and Swank.
Patrizio Di Marco, Gucci's 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.
Gucci is extremely pleased with this decision, which should serve as a powerful deterrent for those who attempt to unlawfully exploit Gucci's 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. "It's 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 Gucci's 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.