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Gucci Presses Trademark Case in Other Courts

The company's lawsuit appears to be over in the U.S., but it is forging ahead with new cases filed against Guess Inc. in China, Italy and France.

NEW YORK — One down, three to go.

This story first appeared in the May 23, 2012 issue of WWD.  Subscribe Today.

Gucci America Inc.’s lawsuit against Guess Inc. appears to be over in the U.S., but the luxury goods maker is forging ahead with new cases filed in China, Italy and France.

Fresh off its $4.7 million win against Guess and its footwear licensee, Marc Fisher Footwear, in a Manhattan federal court Monday, Gucci said it remains “firmly committed to take the necessary action to preserve the integrity, exclusivity and distinctiveness” of its brand.

RELATED STORY: Gucci Awarded $4.7M in Guess Case >>

“Gucci is extremely pleased with this decision, which should serve as a powerful deterrent for those who attempt to unlawfully exploit Gucci’s intellectual property,” Gucci president and chief executive officer Patrizio di Marco said Tuesday.

Judge Shira Scheindlin, who presided over the case, may have ruled in favor of Gucci by awarding the brand injunctive relief, barring the defendants from using the green-red-green stripe, the Quattro G pattern in brown and beige colorways and certain square G marks, but she only awarded Gucci a fraction of the $221 million it was asking for.

The low level of damages awarded might send Gucci back to court to appeal the verdict, according to Brian Brokate, a partner in the law firm of Gibney Anthony & Flaherty LLP. Gucci declined to comment on whether it would appeal the judge’s monetary ruling.

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“The damages were surprisingly low considering the amount of time that the sales of the infringing product had been going on,” Brokate offered.

Although the lawsuit was filed in 2009, Gucci based its claims on over a decade of Guess infringement of a variety of trademarks. Interestingly, the judge didn’t rule on Gucci’s counterfeit infringement claims, but instead on trademark dilution, which is arguably more difficult to prove, as it applies to what the court must define as “famous marks.”

While Monday’s decision is by no means landmark, it has legal experts linking it to fashion’s other big lawsuit: Christian Louboutin vs. Yves Saint Laurent, Gucci’s sister brand, which is also part of PPR Group. That case, which examines whether Louboutin should be able to keep its red-sole trademark, is currently being deliberated on by the Court of Appeals here.

At issue in the Louboutin case is whether a color can be trademarked for fashion items. In the Gucci case, the judge said that the red-green-red coloration when designated to three stripes is a viable trademark that demands protection.

“In the context of Louboutin, Judge Scheindlin tacitly affirmed that color marks are protectable,” said Susan Scafidi, director of Fordham University’s Fashion Law Institute.

While this may be the case, don’t expect the Gucci ruling to play a material role in the Louboutin case.

“I don’t see this case having a significant effect on that case,” said Brokate, who noted that while the judge’s ruling may not impact Louboutin vs. YSL, it would leave a mark on the industry.

Ending her opinion with a quote from Oscar Wilde that refers to fashion as “a form of ugliness so intolerable that we have to alter it every six months,” the judge made it clear that Gucci and Guess should have settled the matter out of court.

According to sources, the “ugliness” referred more to questionable lawyering practices spanning the three years than the merits of Gucci’s claims.

Notwithstanding, Brokate offered his view on the judge’s opinion: “Aside from the Oscar Wilde quote being pretty funny, the way she ended her decision was essentially like, both parties spent a lot of time and a lot of money — and for what?”