June 26, 2018
The long-running trade mark dispute between Gucci and Guess, principally concerning trade mark rights in the letter “G”, has finally come to an end – after nine years!
The Guess shoe is clearly very similar Gucci’s well-known green, red and green striped shoe, with a configuration of interlocking G’s creating a diamond effect. A close inspection of the Guess range of handbags, wallets and belts showed that Guess had clearly attempted to “Gucci-fy” their products – and it didn’t go unnoticed.
Evidently, Gucci were not happy of the use of “G” in Guess’ product, as this was causing customer confusion and loss of profits. Gucci had bought proceedings against Guess in several countries (Italy, France, Australia, and China) but will now conclude “all pending IP litigations and trade mark office matters worldwide”, as a settlement agreement has been reached between the two competitors.
So what can we learn from this long-running dispute?
Seek trade mark protection early. Trade mark disputes, such as this one, can span over a long period of time involving huge costs for the clients, so obtaining trade mark protection as early as possible is an essential part of business survival because trade marks are the ‘brand identifiers’ that customers use to identify the source of products and services.
Carry out searches in advance. When establishing your brand, you should carry out preliminary searches (the earlier the better!) to see whether any similar or identical trade marks already exists (in use, on trade marks registers or both).
Other IP protection? It is also worth noting from the Gucci v Guess dispute that obtaining trade mark or other IP protection for other distinctive aspects of your product or brand is also advisable e.g. a particular colour or a particular design that is unique to your product or brand (e.g. the green, red and green stripe design or the design of the interlocking G’s creating a diamond effect).
Avoid infringement. But what if a company just wants to rebrand and keep up with the times? Well, it can be easy to gain inspiration from someone’s work, but be careful – you may end up in trouble if you cross the line from being inspired by someone else’s brand to copying someone else’s brand.
At Briffa, we advise on all aspects of contentious and non-contentious trade mark law and practice. We offer free 30-minute consultations to all new clients. Please contact us on firstname.lastname@example.org or 020 7096 2779 if you would like to set up a call or a meeting.
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