Milan Court of First Instance rules in favour of Guess in the Gucci/Guess saga

IPKat team members' keyring

Can IP litigation stories be as appealing to the general public as Italian gossip characters' weddings or Beyonce's pre-show rituals? 

The answer is definitely 'yes', when the IP story in question is (1) a trade mark one, and (2) involves G-loving fashion brands like Gucci and Guess.

With a 83-page decision published on 2 May last, the Tribunale di Milano (Milan Court of First Instance) dismissed all Gucci's claims in a 4-year long action for trade mark infringement and unfair competition that the Florence-based fashion house had brought against US Guess and others.

This IP story has already attracted quite a good deal of media coverage. As in fact reported by - among others - Vogue and some Italian newspapers (eg here and here), in 2009 Gucci (represented by SIB Legal) sued Guess (represented by Studio Legale Sena e Tarchini), claiming trade mark infringement in a few Italian (nn 1474470, 1057600, 1057601, 1474814, 1040793, 1474815, 971291, 13300236) and Community (nn 122093, 940490, 940491, 2751535, 160028, 121947, 4462735, 5172218, 6682728) trade marks bearing - among other things - those G-logos dear to numerous fashionistas in Italy and abroad, as well as unfair competition pursuant to Article 2598 nn 1, 2 and 3 of the Italian civil code. 

IR designating the EC No 940491

Not only did Guess ask the Tribunale di Milano dimiss Gucci's claims, but also declare its trade marks invalid on absolute grounds of non-registrability or, alternatively, loss of distinctive character.

While in its 2011 decision the Southern District Court for the Southern District of New York (on which see here and here) found - among other things - that Guess had infringed three of Gucci's trade marks, the Tribunale di Milano dismissed all Gucci's claims. 

The Italian court not only held that Guess copied none of Gucci's trade marks, but also declared some of Gucci's trade marks (like those reproduced here) invalid for lack of distinctive character.

IR designating the EC No 940490

The Tribunale also declared Gucci Flora-related trade marks (national trade mark no 971291, and Community trade marks nn 4462735 and 5172218) invalid [incidentally this Kat has always loved the Flora print, which Gucci created for Grace Kelly during the 1960s].

Finally, the Italian court also rejected all the unfair competition claims ruling, among other things, that in the present case it was not possible to hold that Guess stylistic choices had been inspired and driven by those made by Gucci. Rather, while both fashion houses decided to follow fashion trends in respect of certain choices, they also maintained their "peculiar characterisations".

CTM No 4462735

Gucci was pretty dissatisfied with the outcome of the litigation. While announcing its intention to appeal the decision, Gucci also labelled the ruling as potentially dangerous for the protection of "made in Italy".

On a rather different tune, Guess CEO Paul Marciano called Gucci's strategy "arrogant": 

"[T]hanks to its unlimited [financial] resources and by means of worldwide forum shopping, [Gucci] has attempted to stop Guess's global expansion and its business success in the field of fashion accessories. This is deeply wrong and unreasonable. There are general trends in the fashion world that Gucci itself follows, like anyone else in this business; in this respect, Gucci is not different from Guess."

What will happen next? While waiting for the Italian appeal, it is worth recalling that parallel lawsuits have also been filed by Gucci in Paris and Nanjing.