For the past three years, luxury Italian fashion brand Gucci has been in a trade mark infringement dispute with mid-market fashion brand, Guess, over Guess's products which incorporate various Gucci trade marks and get-up such as Gucci's notable green and red strip design (US Trade Mark No.s 1, 483,526 and 1, 122, 789), the "square G" design (US Trade Mark Nos. 3,037,082, 2,214,272 and 2,042,805) the interlocking "G" design (US Trade Mark Nos. 1,107,311 and 1,106,722) and the interlocking "G" pattern (US Trade Mark Nos: 3,072, 549; 3,072,547; 2,680,237). ["Its all a bit too much branding for my taste", the AmeriKat sighs, rolling over onto her unbranded Ralph Lauren cashmere throw.]
Last week, the parties finally met for trial in a Manhattan District Court before Judge Shira Scheindlin.
In their defence filings, Guess argued that Gucci was barred from claiming infringement as it "sat on its rights" in respect of one of the products for at least 7 years before bringing suit against Guess. Further, and more interestingly for us IP lawyers, Guess said that Gucci's confusion surveys failed to prove that the average consumer would be mislead by Guess's designs. Guess's lawyer, Daniel Petrocelli, told the court during his opening submissions that of the 1,495 claimed infringing products, 99% "could never be confused with Gucci". Notably, as was argued, consumers for the Guess products are young women who cannot afford Gucci's luxury prices; Guess's item's sell for less than $100. Another difference, Petrocelli is reported to have stated according to WWD, is that "Gucci uses leather, Guess uses plastic."
Of course, there is still that pesky little confusion test for Gucci, which in the Second Circuit is the Polaroid Crop v Polarad Elecs Corp (1961) test (see test here as applied to another famous shoe battle, Louboutin v YSL). But even with probably good chances on the strict confusion aspects (evidence of, proximity of goods,quality of the goods, sophistication of the consumers, etc) the AmeriKat wonders if these e-mails will help seal the deal against Guess on at least one of the elements of the confusion test - whether or not the junior sign adopted the senior mark in good faith. The case continues.
USPTO proposes new trial rules
“Since the enactment of the Leahy-Smith America Invents Act, we have worked in concert with our stakeholder community to launch transformative initiatives to improve the way Americans innovate, and the way the USPTO handles those innovations. These new rules will offer an alternative way to challenge the patentability of an invention apart from district court litigation.”