Be careful if you wanna GUCCI GUCCI, ya ya, da da…

At IP Whiteboard, we love our brands – especially our luxury fashion brands (see our post on Louboutin here).

Back in 2013, we reported on the battle of the brands, Guccio Gucci SpA (“Gucci”) and Guess Inc (“Guess”) (see our post here).

To refresh your memory, Gucci and Guess have been battling it out over their trade marks all over the world since 2009.

So far, they have fought it out in France, the US, Italy and China with trade mark infringement claims, trade mark cancellation proceedings and unfair competition claims (just to name a few). The tally was 2-2.

Well, it’s finally the Australian Trade Marks Office’s turn and it’s a win for Gucci (you can read the full decision here).

The Australian Opposition

Gucci opposed the registration of the two IRDAs (“International Registrations Designating Australia”) filed by Guess under the Madrid Protocol in classes 9 (covers and cases for electronic devices, eyewear etc) and 18 (bags) for the G-Shine Mark on the basis of its Prior Gucci Marks (see below).

Gucci v Guess

The Hearing Officer upheld the opposition under section 60 (trade mark is similar to trade mark that has acquired a reputation in Australia) of the Trade Marks Act 1995 (Cth). Under this ground of opposition, the Opponent must show that:

  • another trade mark had, before the filing date, acquired a reputation in Australia in respect of the goods/services; and
  • because of the reputation of that other trade mark, the use of the applied trade mark would be likely to deceive or cause confusion.

Upon reviewing the evidence, the Hearing Officer was satisfied that Gucci’s high volume of sales and substantial advertising expenditures and other promotions established the requisite reputation in the Prior Gucci Marks. He even went on to say “While the receipts [of Guess] appear substantial, they are not as substantial as those of the Opponent”…looks like, on the evidence before the Hearing Officer, people are buying more Gucci than Guess!

The Hearing Officer also commented that “the Opponent’s trade marks and the G-Shine share very similar design features, in particular the reversed and inverted ‘Gs’ and the geometric layout of such initials…” Therefore, the Hearing Officer concluded that “a significant number of Australian consumers would at the very least speculate as to some sort of connection between the Opponent’s trade marks and the Holder’s G-Shine trade marks.” Particularly since the marks were similar, the Hearing Officer said that the degree of speculation would amount to, at the very least, the reasonable doubt required to trigger the section 60 ground of opposition.

Importantly, this decision is a reminder that to trigger section 60, there only needs to be “reasonable doubt” in the mind of the consumer about whether the two sets of products, or the products and services in question, come from the same source. This requires a consideration of the actual manner in which the earlier trade mark has been used. This is different to section 44 where both trade marks must be considered as being in “notional fair use”. It is also not necessary under section 60 to show that the respective trade marks are deceptively similar.

What happened everywhere else?

In France, Guess won. The Paris High Court dismissed Gucci’s infringement claim and revoked three of its CTM registrations. Gucci sought €55 million in damages (that’s a lot of Gucci bags!)

In the US, GUCCI won. Gucci was awarded $4.6 million in damages (although it claimed $221 million, which is even more Gucci bags).

In Italy, GUESS won originally, but this was partially overturned. The District Court of Milan rejected all of Gucci’s trademark infringement and unfair competition claims.

The Court of Appeal partially upheld Gucci’s appeal and ordered Guess pay damages. It rejected the infringement claims but held Guess was liable for unfair competition. It also held that three of Gucci’s marks were invalid due to lack of distinctiveness.

The Supreme Court is currently determining damages.

In China, GUCCI won, but Guess has appealed to the Jiangsu High People’s Court.

What happens next?

Will Gucci commence a trade mark infringement action in Australia? My online shopping skills tell me Guess is currently selling bags bearing the G-Shine Mark in Australia…uh oh!