Gucci Wins Trademark Battle Against Guess
San Diego – The fashion industry has long been rife with unauthorized copying of designs, logos and fabrics.
Quite simply, it’s much cheaper and easier to copy successful designs than to create new ones from scratch. Moreover, new designs come out so frequently that designers ignore most knock-off copies of their products. Lawsuits are often time-consuming and expensive. While it can be difficult for a company to copyright a design, a company can register elements of a design as a trademark. For example, the shape of a bag’s flap, patterns on fabric, fabric closures or the look and feel of a strap can be registered for trademark protection with the USPTO.
Despite the prevalence of copies and the difficulty prosecuting knock-off designs, there have been a number of high profile fashion houses that have bucked the trend and taken competitors to court to protect distinctive designs. Luxury shoe designer Christian Louboutin took its rival Yves Saint Laurent to court to protect its famous red-soled shoe, Hermes sued a retailer that sold a transparent rubber version of its Birkin Bag, and most recently, Gucci took Guess to court over unauthorized use of its four distinctive logo designs.
Though the lawsuit was initiated over three years ago, a federal judge recently handed down a decision that awarded monetary damages for the unauthorized copy of design elements by Guess and its footwear licensee, Marc Fisher. Gucci was also granted an injunction to prevent the use of three of four well-known “Square G” trademarks named in the original lawsuit. The trademarks listed in the lawsuit were the green and red stripe, the interlocking “G” pattern, the square “G” and the brand name’s delicate script font . In its original pleadings the Italian company asked for $120 million dollars in damages, claiming Guess’s appropriation of its logos diluted its brand, confused customers and caused it to lose profits.
The case, decided in U.S. District Court in the Southern District of New York, primarily hinged on the use of the interlocking “G” logo on Guess handbags. The luxury design label argued that some of the Guess designs were too similar to its own to be anything less than “studied imitations”. Gucci also objected to the use of its recognizable brown and beige material and design elements such as the distinctive green-red-green stripe. The $4.66 million dollar award against the Los Angeles based company, represented the profit made by all products utilizing the unauthorized logo. Despite its win, Gucci claimed that the damages awarded represent only a tiny slice of the money obtained from the wallets, belts, shoes and other items designed to mimimic it’s designs. However, Judge Shira Scheindlin held that Gucci was not entitled to further damages reflecting lost sales or harm to its brand, calling its analysis for computing damages “highly speculative.”
Posted in: Trademark Registration