August 2009
But my name is Gucci ...
Descendants of the founder of the luxury brand GUCCI (now owned by French holding company Pinault-Printemps-Redoute) have been prevented from using their famous surname to market luxury goods in Hong Kong and New York.
Cosimo Gucci the great-grandson of Guccio Gucci was issued with an interim injunction by the High Court of Hong Kong (Special Administrative Region) on July 31st 2009 after attempting to launch his CoGu brand there. The brand itself which is made up of the first two letters of his names was not however at issue.
It was the promotional material he used for the launch featuring the phrase “designed by Cosimo Gucci” and images similar to GUCCI’s registered trade marks which prompted GUCCI to sue him for trade mark infringement and passing off.
In his decision Judge Horace Wong stated that the use of the words COSIMO GUCCI either alone or following the words “designed by” is likely to mislead the public into believing that such goods originated from GUCCI.
The judge also referred to a European Trade Mark Office decision against Jennifer Gucci (ex-wife of Paolo Gucci, former chief designer at GUCCI), rejecting her Community Trade Mark application for “JENNIFER designed by Jennifer Gucci”.
Last week (5th August 2009) Jennifer Gucci was once again held to be infringing the GUCCI trade mark this time by the Southern District of New York.
She along with her daughter Gemma Gucci had licensed their names for use on luxury coffee, ice cream, bed linen and handbags aimed at the New York market. The US district judge presiding over the case Judge Richard Berman ruled that they were prohibited from continuing to use their names commercially in such way stating that by doing so they had “wilfully infringed and diluted the Gucci trademarks”. In addition the judge stated that they were in turn prohibited from trying to register their names as U.S. Trade Marks.
BRIFFA Comment
Though in some cases and in some regions (such as the U.K.) there is a defence available for parties using their own name as a trade mark even if someone else has registered it, such use has to be in good faith.
Jennifer and Gemma Gucci’s use of their full names as trade marks could clearly not be defended in such way as they were merely relying on the reputation of the GUCCI brand to establish their own businesses.
Cosimo Gucci did establish his own distinct brand CoGu and as stated above it was his use of his name in his marketing material which was found to infringe the GUCCI trade mark. His name was held to feature prominently enough to create a link in the public’s mind with the GUCCI brand and he had probably done this on purpose.
However, it is possible that had he not used his name in such a prominent way his use would have not constituted an infringement of the GUCCI trade mark, after all it is his name.