18 October 2016Trademarks

Gucci loses two trademark appeals against Guess in European court

Luxury brand Gucci has lost two trademark appeals at a European court, in the latest round of the Gucci v Guess battle.

In two decisions made on October 11 ( here and here), the EU General Court dismissed both appeals from Gucci.

In 2013, Italy-based Gucci brought invalidity proceedings against clothing retailer Guess’s mark which features four interlocking G’s and is registered in classes 3, 9, 14, 16, 18, 25 and 35.

The proceedings were brought based on a number of earlier trademark rights owned by Gucci, including international registration number 644636, which features two interlocking G’s.

Both appeals were brought under article 8(1)(b) and (5) of Regulation (EC) No. 207/2009.

In July 2014, the Cancellation Division at the European Union Intellectual Property Office (EUIPO) rejected Gucci’s application for a declaration of invalidity. The following month, Gucci filed a notice of appeal.

The appeal was dismissed in May 2015 by the Fourth Board of Appeal of the EUIPO, which found that the “signs at issue gave a completely different overall impression, with the result that they could not be regarded as similar”.

Gucci then appealed to the General Court, alleging that the signs are highly similar, “inasmuch as each of them consists of a combination of capital ‘G’ letters”.

It added that the attention of the public will be “attracted more by the element ‘g’, which they have in common, than by their minor differences”.

The luxury brand also claimed that its earlier marks have “an exceptionally high level of distinctiveness” with an “indisputable reputation”.

Gucci alleged that the likelihood of confusion was further increased “by the fact that the application for a declaration of invalidity was based on the earlier marks’ membership of a family of marks, which all consist of a combination of capital ‘G’ letters”.

But the court rejected these arguments, upholding the Fourth Board of Appeal’s decision and ordering Gucci to pay costs, including those incurred by Guess before the Board of Appeal.

It held that the relevant public “will not break down the contested mark into its various elements, but will retain the image of the sign as a whole”, and will not see the capital ‘G’ in the mark but “rather an abstract ornamental motif”.

Making a phonetic and conceptual comparison, the court held that the mark “will be perceived as a purely figurative sign without word elements” and that the mark, as an abstract ornamental motif, has no meaning.

Gucci declined to comment.

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3 February 2015   The Paris High Court has dismissed Gucci’s claim that US clothing brand Guess infringed three of its Community trademarks in France, and has revoked the registrations.