Luxury fashion brand Gucci has won a long fought trademark battle against Guess in an Australian Trademarks Office decision handed down last month.
The Australian litigation is the latest in a series of legal battles around the world with the two fashion brands fighting it out in France, the United States, Italy and China.
Gucci has an issue with Guess’s registration of two trademarks known as “International Registrations Designating Australia” for its “G-Shine” design, which show interlocking Gs similar to those used by Gucci.
The hearing officer, Jock McDonagh, upheld Gucci’s opposition on the basis that the label had already filed a trademark which had a reputation in Australia and because of that the use of Guess’s trademark would be likely to deceive or cause confusion.
Above, the Guess trade mark, and below, Gucci.
To date, Gucci has been successful in two jurisdictions while Guess has triumphed in two.
“[Gucci’s} trademarks and the G-Shine share very similar design features, in particular the reversed and inverted ‘Gs’ and the geometric layout of such initials,” McDonagh found.
“A significant number of Australian consumers would at the very least speculate as to some sort of connection between [Gucci’s] trademarks and [Guess’] G-Shine trademarks.”
Cate Nagy, partner at law firm King & Wood Mallesons, told SmartCompany the case highlights how different countries approach trademarks differently.
“One result one way, won’t necessarily guarantee the same result in other countries,” Nagy says.
For SMEs Nagy says the case highlights the importance of doing a trademark clearance.
“In this case Guess probably went in eyes wide open to the risk, but it is still important to clear a logo to make sure there are no infringements down the line,” she says.
Nagy says luxury brands like Gucci will take very strong steps to protect their trademarks as they see trademarks as key to their business.
“If you are looking to launch a brand and you reasonably contemplate you want to launch outside Australia in the future you should look at getting a trademark clearance so you are not limited to Australia,” she says.
Richard Hoad, partner at law firm Clayton Utz, says he would be surprised if Guess was not aware of Gucci’s design when registering its trademark.
“It is a reminder of the dangers of taking “inspiration” from a competitor, even if you introduce what you consider to be reasonably significant design changes,” he says.
Hoad says Guess’s online store shows products bearing similar patterns to the trademarks which Guess applied for and are already being sold in Australia.
“Gucci may look to commence trademark infringement proceedings against Guess,” he says.
“An interesting question in any such litigation would be whether the pattern on Guess’s products is actually functioning as a trademark. This battle, which has also been played out in a number of overseas jurisdictions, may have a long way to run.”
On September 1 Guess appealed the decision to the Federal Court and a directions hearing will be held on October 19.
SmartCompany contacted Guess and Gucci for comment. Guess declined to comment and Gucci did not give a response prior to publication.
Cara Waters is a former SmartCompany editor. Previously, Cara was a senior reporter for the Financial Times’ website and worked for The Sunday Times in London.
