FASHION LAW: GUCCI TRADEMARK CASE VICTORIOUS IN AUSTRALIA
The battle continues for Gucci and Guess Inc—the apparel quarrel dates back to 2009 and has become widely known as the “battle of the brands.” If you remember: back in 2012 Gucci was awarded only $4.66 million in a copyright lawsuit against Guess. Gucci originally requested a hefty $120 million. Beggars can’t be choosers, right?
Gucci’s ongoing argument against its competitor stems from claims that Guess is trying to “Gucci-ize” its product line by selling wallets, belts, shoes, and a slew of other items that bore similar designs. These products subsequently have confused customers and weakened the brand.
Both brands have duked it out in various geographic locations including France, the U.S., Italy, and China—one could say Gucci sure knows how to leave a global footprint. Next up, Australia! In a separate filing, Gucci opposes to two International Registrations Designating Australia (IRDA’s) filed by Guess under the Madrid Protocol in classes 9 and 18 (cases for electronic devices and bags respectively) for the G-Shine Mark that Gucci claims is a trademark infringement.
Here’s a simple breakdown: the Madrid Protocol is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application: “international application.” When it is accepted into registration, the brand is protected in all the member countries based on their national trademark laws.
The hearing officer in this case upheld the opposition from Gucci under section 60 of the Trade Marks Act 1995, which clearly outlines specifics on a trademark that has acquired a reputation in Australia.
The officer commented, “The opponents [Guess] trademarks and the G-Shine share very similar design features, in particular the reversed and inverted ‘Gs’ and the geometric layout of such initials…a significant number of Australian consumers would at the very least speculate as to some sort of connection between the opponent’s trademarks and the holders G-Shine trademarks.”
Gucci remains victorious in Australia. Anyone want to bet on the location of Gucci’s next lawsuit? …anyone?
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