Anyone who has walked into a Guess store in the past four years has probably noticed that the company’s handbags resemble the iconic Gucci pattern. Sure, both brands start with the letter “G,” but does that really give Guess the right to use a trademark that is strikingly similar to the luxury brand?
According to a federal judge in Manhattan, the answer is no. On May 21, 2012, WWD reported that Gucci won its trademark battle against Guess Inc., but Gucci did not receive the damage award that it was expecting. Gucci claimed that it suffered $221 million in damages, but it was only awarded $4.7 million in combined damages from Guess and its footwear licensee Marc Fisher Footwear. U.S. District Court Judge Shira Scheindlin wrote that Gucci had proven its dilution claims under the Lanham Act, which is the primary federal trademark statute in the
United States, and limited Guess’ use of the Quattro G pattern in brown and beige colorways. However, Scheindlin rejected Gucci’s counterfeiting claim, noting “courts have uniformly restricted trademark counterfeiting claims to those situations where entire products have been copied stitch-for-stitch.”
In an eloquent twist, Scheindlin quoted Oscar Wilde, who described fashion as “a form of ugliness so intolerable that we have to alter it every six months.” According to WWD, Scheindlin wrote, “With the instant disputes now resolved, and with Gucci’s entitlement to the relief noted above, it is my hope that this ugliness will be limited to the runway and shopping floor, rather than spilling over into the courts.”
Gucci recently won $4.7 million from Guess in the trademark infringement suit. Since Gucci originally asked for $221 million, this win did not seem to be big enough because Gucci resued Guess in China, France and Italy just last week.
The original lawsuit was filed in 2009 against Guess and Marc Fisher Footwear (who also got in trouble in the Ivanka Trump copying case). Guess had made a shoe that copied several of Gucci’s design elements, including the “G” pattern and their signature red and green stripe. Of the awarded $4.7 million, Guess has to pay $2.1 million, and Marc Fisher Footwear has to pay the remaining $2.6 million.
“When you have a case of this magnitude and you have companies that really feel they’re in the right, and take it more personally than as a legal matter, it’s hard to settle. When it comes down to it, they are pleased that the outcome went the way it did,” Darren Saunders, Marc Fisher Footwear’s lawyer, said about his client’s reaction to the decision.
In addition to the money damages, Gucci was granted a permanent injunction, which bars Guess from using the “Quattro G” pattern, the red and green stripe, and other G marks.
Although Gucci was pleased with the results of the case, they have said they are firmly committed to take the necessary action to preserve the integrity, exclusivity and distinctiveness of their brand. They also warned that their win should serve as a detterent for those who attempt to unlawfully exploit Gucci’s intellectual property.
Guess CEO Paul Marciano said, “In my opinion, the results in this case show that Gucci grossly overreached in its claims and the entire case could have been avoided with a single letter or phone call. Gucci has also tried to attack Guess in other jurisdictions, but Guess will vigorously defend its rights in all of these cases and is confident that its position will be vindicated.”
Luckily, they have the chance to do in China, Italy and France.
In 2009, Gucci America Inc. filed suit in federal district court in Manhattan against Guess Inc. for alleged trademark infringement. According to WWD, a federal district court judge in Manhattan has denied Guess Inc.’s request to dismiss and is allowing certain claims of Gucci America Inc. to proceed. Included among those claims allowed to proceed are regarding a “script Guess logo” and a claim over a “green-red-green stripe” which are proceeding due to the existence of material factual issues. However, the district court judge did rule in Guess’ favor regarding some of Gucci’s dilution claims. These claims involve the “Square G” and “Quattro G” designs. The judge ruled that Gucci failed to provide any credible evidence to raise any issue that actual dilution has occurred so those claims against Guess were dismissed.
Gucci once again came in as the most searched fashion brand, according to the engineers over at the Microsoft-owned Bing. The search engine’s Trends Report has Gucci as king of the mountain for the second year in a row, while the competitors have varied.
Ralph Lauren came in second on the list, with Chanel dropping in the ranks from last year’s second slot to this year’s fifth spot.
While it seems clear that Gucci is at the forefront of Bing searchers’ fashion minds, there is but one question waiting to be answered: What are Google users searching for? The Gucci trademark is one of the most widely recognized marks – like Ralph Lauren’s Polo Player, Chanel’s Cs, and Louis Vuitton’s LVs. There are 428,000,00 sites that come up when someone searches for Gucci in Google and 81,700,000 sites in a Bing search for Gucci – but only one is Gucci’s official site. Wikipedia-type sites and authorized Gucci retailers aside, it is more than likely that most of those almost half-trillion sites are counterfeit sites. Being the number one searched brand on an web search engine has its perks, but it also means that brand must diligently protect itself from hundreds of millions of imitators.
‘Designer branded’ bandages are available for purchase at the Japanese lifestyle store www.sugiolife.com. Sugiolife acquires these items through a company known as Brandages. Brandages describes these products as “original custom designs to compliment top fashion brands…created with one goal in mind…’to heal in style.’” A consumer can purchase a pack of 6 brandages, 2 brandages per design for $7.95.
I think it’s safe to say that Sam Chihlung Yin, a former Gucci America Inc. IT employee, will no longer be taking advantage of the Gucci employee discount. That’s because he could face up to 15 years in prison for first-degree computer tampering. According to WWD, Yin was arraigned in Manhattan Supreme Court on Monday for hacking into Gucci’s computer system after being fired from the company for unrelated reasons. Yin pleaded not guilty to a 50-count charge totaling more than $200,000 in damages.
According to WWD, Yin also used his employee discount while he worked at the company to buy Gucci merchandise and ship it to Asia (something tells me these weren’t intended to be gifts for friends and family…) But that’s not even the whole story. While employed at Gucci, Yin created a secret account which he used to access and control the company’s computer system. After he was fired in May of last year, Yin took a small device from his computer that allows Gucci employees to remotely access its network. Then, he emailed the IT department and tricked them into activating the device. The result? Meltdown on the network. WWD explains that Gucci lost access to the network for a period of 24 hours and some network documents were deleted for good.
Yin is to appear in court on May 31st.
Recently, in Manila, Philippines, Rhona Vergara, Senior Partner of the Vergara Mamangun Jamero Gonzales (VMJG) said “in coordination with the Intellectual Property Office of the Philippines, fake Louis Vuitton goods were removed from the Greenhills Shopping Center in San Juan.” Vergara is amongst the retained counsel of LV in the Philippines to try and stop the sale of counterfeit LV products. A noted 1.2 billion Philippine peso (roughly $27 million) worth of fake LV products and bags were destroyed.
Italy recently confiscated 9 million of counterfeited watches and bracelets in the Palermo, Sicily. The items were counterfeiting famous designers such as Louis Vuitton and D&G. Many Hello Kitty counterfeited health-threatening goods for kids were also seized. A criminal complaint has been filed against the shop owner.
Also, in Friuli, Italy, over 250 million items coming from China with the words “Made in Italy” were seized. The Italian PTO report can be found here.
In a city in Michigan, Clinton Township police found and confiscated 21 boxes of counterfeited jewelry, purses, perfume, and shoes. Prada, Gucci, and Coach were among the fake brands found.
This takes Dan Hunter’s post about Chanel’s new line in temporary tattoos to new levels. While it is usually Louis Vutton that has its pattern stretched on everything from car seats to house walls, it is now Gucci’s turn. The idea of people tattooing a brand’s trademark on their body feels wrong, like they should have gotten consent from the fashion house before hand. However, as Laura points out in her post, “you would be hard pressed to claim infringement of trademark rights by your logo being tattooed on a person’s body because, in short, it’s person’s body and not a good…..Chanel is not in the business of manufacturing people, and you’d be hard pressed to establish the requisite likelihood of confusion.” What brand would you tattoo onto you?
New York federal courts have been a hotbed for newsworthy fashion law happenings in the past few weeks. We’ve already reported on Judge Alvin Hellerstein’s order allowing significant freedom for Polo and The North Face to seize domains registered to cybersquatters. Now, federal district court has set aside a federal magistrate’s June decision that Gucci America Inc.’s communication with an inactive member of the California bar would not be protected by the attorney-client privilege.
During the course of a Gucci suit against Guess Inc. for counterfeit sales featuring a Gucci style interlocking GG logo, Guess sought out evidence to support its argument that Gucci was long aware of the alleged infringement and took no action.