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Guess Wins Latest Trademark Infringement Dispute Against Gucci in the French Courts

The Court of Paris has ruled in favour of Guess in the latest lawsuit brought by Gucci for alleged infringement of some of its trademarks.  Gucci claimed that Guess was infringing its rights by selling wallets, belts, and other products whose designs copied or mimicked its own.

On 30 January 2015, the Court of Paris rejected each of Gucci’s claims of trademark infringement, counterfeiting and unfair competition. Gucci’s request for 55 million Euros in damages was denied and, instead, Gucci was ordered to pay Guess 30,000 Euros. In addition, the court invalidated three of Gucci’s “G” European Community and international trademarks, so that the Italian label can no longer claim exclusive use of those trademarks.

The suit forms part of a series of similar trademark challenges between Gucci and Guess that have been playing out in the international courts since the first suit was filed by Gucci in 2009. Rulings have been handed down on both sides, to date in China, the United States and Italy, as well as in France.  As CovBrands previously reporteda New York judge awarded Gucci 4.7 million US dollars in damages in 2012 in its lawsuit accusing Guess and its footwear licensee Marc Fisher Footwear of copying four of Gucci’s trademark designs . The designs included a green-red-green stripe mark, a stylized block letter “G” design mark, the repeating “GG” pattern and a group of interlocking “G” diamond motifs. The award was a fraction of the 120 million US dollars sought by the luxury brand.

The District Court of Milan ruled in favour of Guess’s claim seeking to nullify three of Gucci’s registered trademarks in Milan.  The court rejected the infringement claims filed by Gucci, ordered the cancellation of certain Gucci trademarks, and rejected its rights in the “Square G” logo. The decision was, however, partially overturned by the Milan Appeal Court, which found that whilst there had been no trademark infringement by Guess, the retailer was liable for unfair competition. In this instance, Guess was ordered to pay Gucci damages resulting from the unfair conduct. Courts in China have also ruled in favour of Gucci.

Following the verdict of the French courts, Guess has suggested that Gucci’s parent company, French luxury goods group Kering, has wasted time bringing ongoing trademark infringement claims to the courts. In giving its opinion on the recent ruling, Gucci has commented that it strongly disagrees with the verdict and intends to appeal the decision.

Guess may have succeeded in the latest courtroom battle, but with actions between the brands ongoing in the US and Europe, the fight between Guess and Gucci over these particular trademarks looks set to continue. It would seem that the New York judge’s suggestion, made following the court’s 2012 ruling, that the disagreement “be limited to the runway and shopping floor, rather than spilling over into the courts”, has long since been forgotten.  We will continue to keep an eye on the battle.

This post was written with contributions from Camilla Gare.

© 2020 Covington & Burling LLP


About this Author

Simon Frankel, litigation attorney, Covington

Simon Frankel is an experienced litigator who focuses his practice on copyright and trademark disputes, with an emphasis on the technology and consumer products sectors. He is chair of Covington’s Intellectual Property Rights practice group and a member of the firm’s Management Committee.

Mr. Frankel has also led defense of numerous consumer class actions, including unfair competition and false advertising claims under California Business and Professions Code Section 17200, and Internet privacy claims under the Electronic Communications Privacy Act and Computer...